Strategies to Protect Your Trademarks In China

There are two ways of trademark protection, one of which is that the administrative departments for Industry and commerce or the economic investigation departments of public security at all levels of the state takes the initiative to exercise their powers to investigate and punish offenders of counterfeiting registered trademarks and trademark infringement in the jurisdiction under their discretion power  according to  trademark law of PRC; the other is that enterprises and individuals report trademark violations and crimes to the above two authorities. Or the relevant trademark right holder or user sues the infringer to court for trademark infringement.

The period of trademark protection shall be ten years from the date of the announcement of the trademark registration, but after the expiration of the period, additional fees shall be paid to renew the trademark with unlimited times. The renewal shall be handled within the prescribed renewal period.

The function of trademark protection is to protect the trademark use rights of trademark registrant and trademark users by law, to inform others not to use the same or similar marks as the their trademark, and to investigate the relevant liabilities of the violators who infringe upon the exclusive rights of other registered trademarks, to ensure that consumers can distinguish different providers of goods or services through trademarks. At the same time, the legitimate rights and interests of consumers and enterprises should be safeguarded to expand maximal extent.

Matters needed to be attended for trademark protection in China

 (1) The protection of the exclusive right to use a registered trademark of an enterprise shall be limited to the approved registered trademark and the commodities used therein. Any form of self-change shall not be protected by law.

 (2) Enterprises should pay close attention to the publication of authoritative information such as China Trademark Network; to submit trademark objections or disputes within the stipulation of time limit to other’s trademark registration application or registered trademarks which  are suspected of conflicting with their prior rights,

(3) Enterprises should make full use of sales outlets as positions for trademark rights protection, actively train relevant salesmen, strengthen the inspection of surrounding markets through salesmen, timely discover infringement clues, and improve the effect of rights protection.

 (4) When an enterprise discovers that another person is suspected of infringing upon its exclusive right to use a registered trademark, it shall formulate and take timely measures to collect and notarize the following evidence: a. infringing commodities and trademark marks; b. sales contracts and vouchers; c. photographs of places of production, sale and storage; d. other relevant evidence.

 (5) Cases suspected of infringement after preliminary verification shall be handled by negotiating with the infringer, complaining to the administrative departments for Industry and commerce, suing to the people's court or reporting the case to the public security department according to the seriousness of the case.

 (6) When an enterprise requests the administrative department for Industry and commerce to handle the case, it shall complain to the administrative department for Industry and commerce at or above the county level (including the county level) where the violation was occurred, and submit the following information:

1. Complaints: including the name or name of the complaint, address, contact information, the name or address of the respondent, infringement facts and related information, the legal basis and requirements of the complaint, the date of the complaint, etc.

    2. Complainant qualification certificate: including copy of valid business license or identity certificate, certificate of trademark ownership, etc.

3. Evidence of infringement: including infringed objects, trademark marks, relevant bills, photographs, etc.

Where a complaint is entrusted, a valid power of attorney and the identity certificate of the principal shall be submitted.

 (7) Enterprises may apply to the General Administration of Customs for the record of trademark intellectual property rights in accordance with actual needs, and strengthen trademark protection in the import and export sectors.

 (8) Enterprises may apply for the recognition of well-known trademarks, expand the scope of trademark protection and enhance the intensity of trademark protection.

There are two ways to identify well-known trademarks: administrative and judicial recognition. The administrative organs that have the right to identify well-known trademarks are the Trademark Office of the State Administration of Industry and Commerce and the Trademark Review and Adjudication Board, including the identification of the Trademark Office in trademark management cases and trademark objection cases, and the identification of the Trademark Review and Adjudication Board in trademark objection review and trademark dispute cases. The judicial organs that have the power to identify well-known trademarks are the capital city where the people's governments of provinces and autonomous regions are located, the intermediate people's courts of cities with separate planning power, and the intermediate people's courts within the jurisdiction of municipalities directly under the Central Government and other intermediate people's courts approved by the Supreme People's Court.

 (9) Enterprises should implement risk control, establish early warning mechanism of trademark exclusive rights according to the characteristics of enterprises, and formulate plans to deal with disputes over trademark exclusive rights.