Before you do business in China, you should consider filing for trademark protection on your name and logo. Here is some general guidance:
Although the EU, China and USA are covered by WIPO (World Intellectual Property Organization) under the Madrid Protocol, trademarks registered internationally under the Madrid Protocol are not protected globally. So even if you have a registered trademark in Germany or France, it doesn’t mean you’re protected in China. Nor are Hong Kong trademarks valid in Mainland China.
But the good news is that foreign companies can file for trademark protection. However, a Chinese trademark agency will need to handle the registration for you.
Link: Trademark Law of the People’s Republic of China (Revised 2019)
The first person to file a trademark gets exclusive rights to distribute and sell a product (generally do business) under that trademark. Even if you are a large, well-known company abroad, another entity can easily file a trademark claim on your company’s name and logo. If they are the first to do it, they receive the trademark and you have little recourse. That person would be able to stop you from distributing and doing business under your own name and logo in China, even if you have been in business longer.
What if you discover your trademark is already registered? Unfortunately, there are “trademark squatters” in China who operate in the same way as domain parkers. They will likely ask for money to transfer it to you, and you will have very few other options. This is why many lawyers suggest filing for trademark protection well in advance, before anyone ever finds out that you are considering doing business in China.
Foreign applicants must register either the Chinese version or a direct translation of their trademark to avoid any miscommunication or infringement.
Choosing a distinct and well-considered Chinese name for your trademark is a good idea anyway, because Roman characters alone will not protect your mark. The same or similar mark can be registered by another business in Chinese characters. Also, a smart Chinese name for your company will be more comfortable for Chinese users to search for, read and speak.
You may also consider SEO when choosing your Chinese name. Most Chinese app stores weigh the title heavily for keyword searches. So while your app name may be different from your company trademark, it helps if keywords that your searchers are likely to use to find your app or services are present.
Link: How to Choose a Chinese Name for Your App, Business or Service
Currently, the 2019 version of the Nice Classification table from the World Intellectual Property Organization (WIPO) is in effect, though China further divides these classes into subclasses. You can choose one class and up to 10 subclasses per registration.
First, be sure your proposed trademark meets all the following requirements:
The process for registering a trademark in China with the State Administration for Industry and Commerce (SAIC) generally takes 12-16 months to complete:
Trademark check fee: ~120 USD
Registration fee: ~1000 USD (including legal fees).
Government fees: ~100 USD, but normally included in the trademark agency’s fees.
Trademark registration lasts forever, but must be renewed every 10 years. If you apply for renewal at least six months before expiration, you can extend for another 10 years. Much like in other countries, if you do not use your trademark in commercial business and/or actively protect it for a period of 3 years, you are in danger of losing it.
Getting official work done in China can be challenging if you don’t speak Chinese or have little experience working with the relevant Chinese government agencies and officials. However, our international team based in Beijing is ready to assist you with trademarks and a variety of other essentials for getting your app published in China. From distribution to localization to monetization, we make it easy for our clients to find success on the Chinese android app store market.
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