China Trademarks: Meet Goldilocks
In going through old emails, I found one I wrote to an Australian client seeking Chinese government approval to sell its product in China. The client wanted to know if it should register a China trademark for its brand name and logo, even though there was a good chance the product would not be approved for sale in China.
The client did not want to spend money on trademarks it might never benefit from if the product were not allowed in China. At the same time, it did not want someone to beat them in registering its brand name and logo as China trademarks, thus precluding them from using their “own” brand name and logo in China.
The advice from our China trademark lawyers was essentially as follows:
You definitely will want to register your brand name in China before you let anyone know you will be using that brand name in China. You definitely will want to register your brand name as a China trademark before you contract with anyone in China to have them distribute your product. Beyond that, weigh the cost of trademarking (the brand and the logo) against the odds of someone registering those before there is any indication that you will be using them in China. Since your product name is pretty unusual and regional within the United States, the odds are good that nobody will register it in China if you can keep it a secret that you are going to China. This assumes that you have not and will not need to reveal your brand name or logo to the Chinese government to get its approval of your product.
Then I reviewed another email from an inventor who is convinced his invention will be a success and wanted us to trademark the name in China now, even though he does not anticipate the product going to China for another five to six years. I advised him that registering a China trademark now without using it during the next three years is generally not a good idea. This is because China’s trademark law provides that if a registered trademark has not been used for three consecutive years, it may be canceled for non-use.
The key to registering your trademark in China? Register it not too late and not too soon.
