Most frequent questions and answers
No. There is a separate trademark law in Hong Kong and Macau as well as Taiwan.A registered mark in China is protected only in Mainland China.
Yes. A registered mark can be attacked on the ground of non-use for consecutive 3 years.
Yes. China uses the system of Nice Classification as well as special subclass system with some special Chinese goods and services.
The registered mark is valid for 10 years calculated from the registration date..
12 months before the expiration date(which is 10 years calculated from the registration date).
Fine to be paid for late renewal
YES.In China, the Chinese language version of your brand can be just as important as the English language version, as wine maker Penfolds discovered.
Penfolds was, until recently, locked in a protracted legal dispute with a businessman who registered the company’s Chinese name before it did.
Treasury Wine Estates, which makes Penfolds, registered the English language name ‘Penfolds’ in China but failed to seek protection for the Chinese language version of its name ‘Ben Fu’.
Three versions of the Chinese language name were registered by businessman known as Daniel Li, who also owns several other trade marks.
In China there is a limited knowledge of the Latin alphabet, so Chinese language versions of a brand are often equally important as the English language version, if not more so.
As a result of the dispute over the ownership of the Chinese name, Penfolds wines were removed from all InterContinental Hotels in China, because of concerns those selling the wine could be liable for damages.
Treasury Wine Estates took legal action against Li’s company in 2011 and won, but Li appealed which resulted in further negotiations taking place. In January 2017 the Beijing High People’s Court found that Li failed to make genuine use of the trade mark and ruled that the trade mark be cancelled. “This decision demonstrates China’s commitment to a strong IP system and fair judiciary,” David Bennett, the new IP counsellor at Beijing’s Australian Embassy, said.
Seeking trade mark protection in China before you start doing business there is extremely important, and it is just as important to secure the Chinese version of your brand, as Penfolds’ experience has proved.
Protect both English and Chinese trademarks
You should try to secure your brand in both Chinese characters and in a transliterated form.
In transliteration, after a trade mark has been translated into a Chinese name, the sound of the Chinese name is then written using the Roman alphabet. For example, For example, the corresponding Chinese trademark of Cadillac is 凯迪拉克 whose Chinese transliteration is KAI DI LA KE, Boeing is 波音 (BO YIN), Sony is 索尼 (SUO NI), and Siemens is 西门子 (XI MEN ZI).
It is important to consider a Chinese name or transliteration for your brand at an early stage, and to consult with a branding consultant or lawyer about the different meanings of the Chinese characters you want to use.
If you fail select a Chinese version of your brand soon enough, your distributors, manufacturers and even the customers themselves will select a Chinese name, and someone could register this name to block your marketing and business in China.