Trademark Protection in China
A new trademark law has been in force in China since December 2019 to strengthen the position of trademark owners. The changes relate in particular to the use of a trademark, higher claims for damages in the event of trademark infringement and opposition to unlawful trademark applications.
Timely application of a trademark
Whoever in China registers a trademark first, will receive trademark protection. It is therefore advisable to register a trademark as a precautionary measure, even if the product launch for the Chinese market is not yet concretely planned.
It is important to be able to prove that the trademark is actually used after registration. (see also: Proof of use of a registered trademark). If a registered trademark is not used in 3 successive years, any natural person or legal entity may apply for cancellation of this trademark.
For the planning horizon of a trademark applicant: A trademark registration in China takes about 12-18 months: 9 months should be expected for the examination of the application. The opposition period is set with 3 months. Opposition proceedings can take up to 12 months.
Registration of a trademark in Chinese language
It is legally not required but advisable to apply for a trademark name for China also with suitable Chinese characters. Experience shows that trademarks with Chinese characters have a higher acceptance. When formulating a Chinese translation, care should be taken that it either comes as close as possible to the sound of the trademark or that it describes the trademark image in the best possible way.
Comprehensive trademark protection can consequently be provided via a logo, the Latin character and/or the Chinese character.
Trademark Infringement
Three Chinese courts, in Beijing, Guangzhou and Shanghai, deal exclusively with IP law. In court proceedings in China, the requirements for the evidence to be provided are very high. On the other hand, the deterrent effect associated with a claim for damages imposed by the court is great.
Alternatively, a dispute can also be resolved via the "Administration for Industry and Commerce" (AIC), which can, for example, order a sales stop or destruction of goods. In this procedure, however, only fines, not claims for damages, can be obtained.
In the event of a trademark infringement, it should be decided on a case-by-case basis and in consultation with a lawyer whether civil litigation or administrative proceedings are more expedient. The procedural paths can also be combined.
Injunction
A Chinese court can order an injunction even before the trial begins. This can either secure evidence for a later trial (application for preservation of evidence) or stop infringing actions until the trial (injunction).
Customs Protection
The seizure of infringing goods by customs is possible if the intellectual property rights are registered with the central administration of customs. The seizure and the subsequent investigation by customs as to whether or not there is an infringement must be applied for in advance by the trademark owner.
For more on protecting against trademark and product piracy, see our 9/2019 blog article.
The New Patent Law in China
In the IP News section (German) January 21, 2021, we summarized what new regulations will go into effect on July 1, 2021.
Regarding Matthias Rößler:
Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.