1. The Changing Nature of Securing Trademarks in China
Once upon a time, securing English-language trademarks in China was relatively straightforward. Our China trademark lawyers would determine the appropriate trademark category or categories under China’s trademark system, select the right class (or classes) and subclass (or subclasses), and secure approval from the China Trademark Office to file a specific trademark. Then the waiting game for the actual trademark registration to issue would begin. However, due to the dramatic surge in trademark filings in China over the past few years, China’s trademark registration process has become significantly more challenging.
2. The Impact of Increased Trademark Filings in China
Previously, after we had advised our client on what China’s Trademark Office permitted and prohibited as a trademark, we could practically guarantee registration of any English, Spanish, French, or German language trademark we attempted to file. This was largely because China’s Trademark Office would approve almost everything for trademark registration, considering that the trademark we were seeking would be unlikely to confuse the average Chinese consumer. Essentially, what we were proposing to register as a China trademark was sufficiently distinct from all existing China trademarks in the same category to prevent confusion for Chinese consumers.
However, things have changed for trademark filings in China. Our China trademark lawyers frequently have to inform our clients that the China Trademark Office may not accept their proposed China trademark and there are times where it doesn’t. This situation leads us to collaborate with our clients to decide whether to continue pursuing the trademark registration or brainstorm a new one.
3. Understanding China’s Perception of Foreign Language Trademarks
The China Trademark Office’s perception of what might cause confusion often differs greatly from what most foreign language speakers would expect. This discrepancy arises from the fact that foreign alphabet-based names and acronyms are viewed by the China Trademark Office as images. As a result, they believe certain trademarks are too similar and could confuse the average Chinese consumer.
For instance, if you seek to register “Aviation” as your trademark and another company has already registered “Avatar” in the same category, the China Trademark Office might decline your “Aviation” trademark registration. The same issue often arises with acronyms and made-up three-letter names, such as “ABC” being deemed too close to an existing trademark like “CBA” or “ABO”.
From an English speaker’s perspective, this might sound absurd. However, when you consider the perspective of an average Chinese consumer—who views these terms as images rather than distinct English words—the confusion might not seem so far-fetched. The confusion standard, as seen by the average Chinese consumer, determines what trademarks China’s Trademark Office will register.
4. Overcoming Rejection: The China Trademark Appeals Process
What can you do if your proposed trademark “ABC” gets rejected due to its similarity to “AEC”? You can appeal to China’s Trademark Review and Adjudication Board (TRAB). If that fails, you can take your case to the Chinese courts. The key here usually involves demonstrating (often with China consumer surveys) that the Trademark Office was incorrect about the likelihood of confusion for the average Chinese customer. If you have a good case, your chances of winning on appeal are good. Conversely, if you do not have a good case, your chances are not so good.
5. Understanding the Importance of China Trademarks
China’s trademark laws are crucial to protecting your brand in what is still one of the world’s most significant markets. For more on why China trademarks are so important, check out China Trademarks: More Useful and More Necessary Than Ever.