Protecting and enforcing your trademark in China

TradeMark in China

Registering your trademark in China is the first step to protecting it. Although it is not an obligation, not doing so will more often than not prove to be a catastrophic error. Whether you sell or manufacture your products in China, not registering your trademark will leave you without protection and open to becoming the next victim of trademark squatting in China.

I have my product’s trademark registered in China, is there anything else I should do to protect my business? Yes.

Registering your trademark with customs in China

Once your product's trademark is registered in China, it is highly advisable that you also register it with Chinese customs through an administrative process.

Registering your Chinese trademark with customs in China will allow you to:

  1. Effectively combat counterfeit products that use your trademark without your authorization from leaving Chinese ports.
  2. Take protective measures and prevent products from exiting Chinese ports if the products in transit are suspected of infringement. Only if the trademark is registered with customs will Chinese customs take protective measures to prevent this.
  3. Pay a lower required guarantee that will need to be provided by the trademark owner when unauthorized products are found by customs.

What is a “required guarantee”?

If potentially unauthorized products are seized at the Chinese border the customs office will require the client to pay a required guarantee to show they are serious about stopping the potentially infringing products. If the customs office verifies that said products are in fact fake, they will return the paid guarantee to the client.

How will Chinese customs proceed when a possible case of trademark infringement is found for a trademark registered through customs?

Customs will either notify the owner of the trademark directly, or their agent on file. It is recommended that the main contact be a local agent to ensure clear communication and understanding of the process. Notification will be given; however, further explanation of the situation is not given. Once the notification is received there is a three (3) day period to submit a monetary guarantee for the shipment of products to be stopped. Once the products are held, the owner of the shipment will be contacted, and they will need to demonstrate that they have the legal right to use the trademark.

If the monetary guarantee is not provided by the trademark owner, Chinese customs will not stop shipment of the products.

Will registering my Chinese trademark with customs cause problems for the people or companies I have authorized to export my goods?

If you have local partners or you have authorized third parties to export your trademarked products, their details should be provided and registered with customs in order to prevent the products from being stopped when leaving Chinese ports.

How long does customs registration of a Chinese trademark last?

Customs registration is valid for a period of ten years starting from the date Chinese customs approves the recordal of the trademark in their system. However, customs registration will only be valid as long as the relevant trademark is valid in China. Therefore, if your trademark is not renewed, lapses, or is cancelled, then your customs registration will no longer be effective.

Unlike with trademarks, there is no grace period to renew your customs registration. It is imperative that customs registration renewal be handled six (6) months prior to its expiration date.

Does Chinese customs provide an additional certificate showing that the trademark has been registered with them?

No. The only certificate of trademark registration is provided by the Chinese trademark office. Once a trademark is enrolled with customs, an automatic email is sent by Chinese customs confirming they have received and registered the trademark in their system. A Copy of this email can be provided for your records.

Once your trademark is successfully registered in China, the following documents will be required in order to proceed with registering your trademark before customs.

  1. A signed and stamped power of attorney document (we will provide this).
  • If the trademark owner is a person, a color scanned copy of a valid government ID will be necessary (such as a passport).
  • If the trademark owner is a company, a scanned copy of the certificate of incorporation of the company (or equivalent) document will need to be provided.
  1. An image of the trademark in JPG format.
  2. A PDF copy of the valid trademark certificate of registration granted by the Chinese trademark office
  3. Pictures of the products for which the trademark has been registered.
  4. Pictures of products showing how the trademark is used and placed in packaging and on the product themselves.
  5. Individualization and information regarding all companies, persons or third parties that are authorized to use the registered trademark. This can be manufacturers, distributors, licensees, exporters, etc.

Contact us if you would like to receive information and prices for trademark services in China.

 

Author: Conrad Fahrenkrug Attorney-at-law @ iGERENT

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