There have been several cases where trade mark registration has been pre-empted by a prospective distributor and it is important to file an application for a trade mark in China sufficiently in advance of supplying a distributor there.
However there can be unexpected complications, even when a timely application has been filed, due to what may be considered by the Chinese Authorities to be potential conflict with existing registrations which may be similar in terms of the mark and the goods of interest.
China has a very restrictive registration system for trade marks and co-existence with earlier registrations is at the discretion of the Chinese Trade Marks Office. It is unlike the system currently in operation in Europe, where registration is allowed notwithstanding similarity with an earlier registration, and it is left to proprietors of any earlier marks to object, if and when they think that to be necessary.
There are also strict requirements with regard to the descriptions and terms that may be used in the specifications, which is a factor in overcoming citations. This type of system is not unique – the United States has a similar one for instance – but once an objection is taken in China it tends to be more difficult to overcome as the Chinese Office can be less open to discussion and argument.
One way of overcoming citations in registration systems of this kind is to seek consent from the proprietors of a cited mark which can work routinely without too much expense, the representatives’ costs of the proprietor relating to the arrangement being paid. However there is a real risk of Chinese companies seeing that as a money-making opportunity and demanding a significant amount of money for the arrangement.
It is useful to obtain a search of the Chinese Register in respect of the mark and goods or services to see whether there is any entry that it likely to be cited against it; in some cases, by doing that (and with the help of Chinese Associates) it is possible to work out a description of goods or services that may be accepted even if potentially conflicting entries exist.
If you are considering filing a trademark in China and would like to have an informal chat about the issues involved, give Rowena Bercow a call on 0131 243 0660. We have well-established links with Chinese firms and can offer a complete service including a preliminary search.