Trademark Protection

China trademark protection
China trademark protection

One of our core businesses is the protection of Intellectual property – and therefor also Trademarks. For many high worthy clients worldwide we provide legal aid in the form of litigation and /or the collection of penalties. 

Why Protect a Trademark?

There are a number of reasons why trademark protection is important to businesses of all sizes. A large company such as Pepsi has spent millions of dollars over more than a century of trading to build up their company to the size that it is today. They do not want another company to come along, selling a cola in the same distinctively shaped bottle, using a very similar logo and font and taking away a large percentage of the market they have worked so hard to gain. Companies who do set up with the sole aim of exploiting someone else's trademarks and brand image will soon find the trademark protection department of the multinationals are on their case, and the legal letters will soon begin to arrive.

When a company’s trademark is used by a different company or entity, it is called trademark infringement, which means it violates trademark protection. Through the protection granted when a trademark is registered, the mark’s owner not only has the right to exclusive use of the mark, but can pursue legal action against those who use the mark illegally. A company can also register its trademark with China Customs Service to prevent the importation of foreign products that infringe on its trademark.

Infringement of your registered trademark

If you discover that your registered trade mark has been used without your consent, you can exercise your rights under China Trademark Law. An infringement of a registered trademark can be defined as follows:

  •  An identical mark has been used in relation to identical goods or services 
  •  An identical mark has been used in relation to similar goods or services 
  •  A similar mark has been used in relation to identical or similar goods or services resulting in confusion for the public 
  •  A similar mark to a registered well-known mark on goods or services that are dissimilar to those registered with the well-known mark (if there is a likelihood of confusion or connection to the well-known mark, and possible damage to the interests of the owner) 

If there is an infringement on your registered trade mark, you can seek damages from the offending party or demand profits from their company for any loss you may have suffered. Determining whether trademark protection has been violated and what legal action to pursue is the responsibility of the trademark owner. Those who sue others for violating trademark protection may receive courts order injunctions against violators to stop further trademark infringement. Plaintiffs may also receive monetary awards for damages, loss of profit and legal costs.

Our China trademark lawyer provides a holistic approach to the management of clients' trademarks and other intellectual property. We design a long-term plan where – concurrent with the R+D phase of product development – we help shape acceptable trademarks, identify potential challenges to successfully obtaining registration, counsel on how to maximize protection and advise on third-party searches, so that filing and product launch is relatively seamless.

The three-tiered trademark registration system in China – national registration, international registration and priority rights – plus the variety of complex international laws, make trademark searches and filings especially complicated. In obtaining national trademark and international registrations for clients, Our China trademark lawyer develops an effective application plan so that clients’ marks are protected now and in the future. We provide insight on what should – and should not – be filed, whether to file based on actual use or an intent to use, when to integrate various applications into a family of marks and what actions best serve the client's entire brand strategy.

In addition, we make sure that our clients claim all of their rights. By understanding the intricacies of our client’s businesses, we can draft appropriate goods descriptions, and provide advice concerning branding strategies and additional registrations that can significantly increase the distinctiveness of the underlying marks.

Enforcement: trademark protection and infringement actions

The registration of a trademark right is only the first step in a longer process of protection and enforcement. For some trademarks, this process will be relatively simple and straightforward but, for many trademark owners, it will be a complex journey, as they seek to distinguish and uphold their rights against counterfeiting, passing off or  infringement by third parties.

This is a basic introduction to trademarks and the trademark enforcement process. For details on Our China trademark lawyer’s specific trademark services, including searching, watching, trademark registration and international filing, click here for our services overview page. To contact one of our attorneys or to review their expertise in your sector, click here.

Identifying infringement: third-party use and passing off

A trademark gives its owner the right to exclude others from using the registered mark in the relevant territory and group of classes. As such, the emphasis is on the trademark owner to monitor for misuse and to enforce the right via infringement action where misuse is found.

Our China trademark lawyer’s trademark watching service alerts trademark owners to the unauthorised use or misuse of brand names, logos and trade names, including passing off. Our team of experts also work with companies to develop a strategy to act against trademark infringement, ensuring that any action taken is both cost-effective and proportionate to the threat. Speak to one of our trademark attorneys for advice on prevention and monitoring tools.

Responding to trademark infringement and litigious actions

Trademark owners don’t just need to monitor and act against infringing actions by third parties; they may also find that trademark infringement and passing off actions are brought against them too. This could be for a number of reasons; for example, they didn't undertake a thorough trademark search before registering the mark or they have recently extended their use of the trade name into a new market or product area, in which a conflicting trademark registration already exists.

Due to similarities in the brand names chosen for trademark applications, conflicts between trademark owners and applicants are becoming increasingly common. Unless you have conducted a thorough trademark search before using or seeking to register a new mark in your chosen territory or class, there is a possibility that your chosen mark will be similar or confusingly similar to a mark that has already been registered.

The strongest brands are built on strategic trademark registration.

Companies develop competitive advantage by being aggressive about brand protection. Proactively. Where trademark registration is the key to your brand enforcement strategy, our attorneys personally do the research and applications for your trademarks – not paralegals. To this end, we will help you determine where you may benefit from international protection and then file your mark with the associated trademark system. To accomplish this, we have built strong relationships with the best trademark law firms around the world. To us, the right firm is not just a big name, but the best foreign firm to handle your specific matter. Our network of global associate firms are tried and tested, and we personally manage the relationships, ensuring that you receive the high level of service and affordability from global counsel that you receive from us.

Whatever the cause, Our China trademark lawyer can work with you to examine the validity of your trademarks, assess the trademark infringement or passing off claim in light of that examination, and provide advice and assistance on possible defense, settlement or negotiation strategies.