China Trademarks and Your Logo

If you are sourcing products from China you should register a trademark in China for any logo and/or brand name appearing on your goods and/or packaging. China is a first-to-file country for trademarks and what this means in real life is that if you do not secure the relevant trademarks for China you are laying out a welcome mat for bad-faith registrants, such as competitors or trademark “squatters” to secure YOUR trademark and then hold you for various different sorts of ransom.

You should register in China whatever marks you are certain (or fairly certain) you will use in China and for products you are certain (or fairly certain) you will be sourcing from China. You though should not overdo it by applying for every mark you might use in China as that will lead to additional costs and perhaps unnecessary headaches if the registration is contentious, on account of objections by China’s Trademark Office and/or other parties. And even though China will grant trademark protection to a brand that has never been used in commerce by the applicant, failing to use a registered Chinese trademark in commerce for three uninterrupted years puts that trademark at risk of cancellation for non-use.

The safest and most comprehensive China trademark strategy is to register separate trademarks for every logo and brand name you intend to use in China. For some companies, however, another method may be more cost-effective. If you have a logo that combines a visual device and words, registering just that logo as a trademark in China will usually get you comparable protection to filing separate trademarks for the visual device and each phrase. Consider a McDonald’s logo that incorporates the familiar Golden Arches with the word “McDonald’s” underneath. If McDonald’s were to register this logo in China as a trademark — and solely this logo — it would gain protection for the Golden Arches and the word “McDonald’s.”

However, to maintain protection for all of the elements in a logo, you must use the exact logo as registered at least once every three years or your China trademark for that logo will be at risk of cancellation. If the underlying trademark is cancelled, the protection for the individual logos and words also will go away. Note that exact means exact: same font, same size, same alignment . . . same everything.

In practice, companies like McDonald’s virtually always play it safe in China by registering both the logo (the Golden Arches), and the word “McDonald’s” (plus other marks such as slogans — “I’m lovin’ it”, Ronald McDonald, etc.). But for companies lacking a Big Mac-sized IP budget, this “register everything ” approach probably will not make sense. One of the things we have been noticing of late from American and European companies coming to our law firm after having used a fake law firm to register its trademark is that they are not only missing key trademarks that they should have sought in China, but they also have actually paid for and secured trademarks in China that they do not need. In other words, like pretty much every aspect of Chinese law, it is both important and considerably more cost-effective to do things right with your China trademarks the first time.