As we have written many times over the years, if you are selling goods into China, sourcing goods from China, or just doing business in/with China, you should probably register trademarks in China for your brand names and logos.
China is a first-to-file country and it does not require evidence of prior use. This means that whomever files for “your” trademark first almost certainly gets it, making it essential for legitimate trademark owners to act quickly. For more on the need to register your trademarks in China, check out China Trademarks: Register Yours BEFORE You Do ANYTHING Else.
But exactly for which goods and services exactly should you register your trademark in China?
Similarly to the way most countries do, China breaks out its trademark registrations into 45 different classes. These classes are in turn divided into myriad subclasses. Very roughly speaking, what this means is that, if ABC Company registers its “ABC Trademark” in the class for clothing (25), it will only be protected against infringement of the ABC Trademark on clothing. If someone wants to use the ABC Trademark on clocks, cars, kitchen appliances, or any other product or service within any of the other 44 classes, they will be free to do so.
So then what can companies like ABC do? Well, ABC can register the ABC Trademark in all 45 classes, but that is not really a solution, given the costs will be prohibitive for all but the largest companies. In addition, the more classes a company’s applications cover, the greater the chance that there will be office actions and oppositions with which to contend. Moreover, if a trademark owner fails to use its registered trademark for three years, it risks losing it, so it ultimately does not make sense (except in very limited circumstances) to “defensively” register a trademark that a company knows it will never use.
So what should companies do then, when filing for China trademarks? As a rule of thumb, they should register their marks in the classes of products they may make or sell in the future, or where there is room for consumer confusion. Let’s take the ABC Trademark on clothing. It probably does not make sense to register that for kitchen appliances, but it might make sense to register it for bags, since many clothing companies also make beauty products. Note that registering the trademark for bags does not only give ABC the option of selling its own bags; it also prevents others from selling bags while piggybacking on ABC’s brand reputation for clothing.
In addition, just about every consumer goods company (and many tech and industrial companies as well) should apply for a China trademark in the class for clothing, in addition to the trademark classes of their core products. This is in part because clothing might turn out to be a good China business proposition, even for companies primarily operating in unrelated spaces. Take for example Tabasco and Mercedes-Benz, whose threads are popular in China. It also helps avoid issues if you decide to offer promotional t-shirts or caps. Depending on the business, it might make sense to do the same with other items, such as lighters.
As you can see, trademark strategies are closely linked to business strategies. Thinking about the trademarks and classes that should be included in registrations might even help delineate business plans–and perhaps in some cases help your team hit upon winning ideas.
