Being copied is a real problem in China. Arriving on a market and seeing a copy of your product even before launching is not something pleasant. It’s even really frustrating. The Chinese paradox could be described as follow: The fast development of intellectual property law offers legal protections, but a high level of counterfeiting and piracy activities is still prevalent.
Therefore, many businesses are reluctant to face the potential infringement of IP rights and dilution of their brands by expanding into China. In a country where counterfeit, fake brands and fake products are proliferating, startups and foreign businesses will have to invest in risk management measures and trademark protection to operate in the best conditions possible.
In this article, we will see all the steps you can take to protect your brand in China.
Register your IP in China
Without registering your copyrights, patents, and trademarks in China, your IP has no formal protection here. You have to register an eligible IP as early as possible. Here is the full range of IPs you might file:
Patents
You need to file your application with the State Intellectual Property Office (SIPO) for IP, which they view as valuable for your business for both core and fringe technology. Also, it needs to be properly translated before filing it.
Trademarks
We’ve seen many trademark infringement cases over the years. For brand protection, you need to fill in a trademark application both in Chinese and in English, choosing carefully the product categories and sub-categories if needed.
Check China trademark database (available online) for similar or the same trademark examples filed by competitors and infringers (even in categories outside a company’s core products).
Copyrights
Copyright registration is not required but you should consider registering your work with the National Copyright Administration as it will provide a public record and can serve as useful evidence in copyright disputes in Chinese courts.
It’s an extra step to protect your brand in China and we advise all brand owners and international companies to use this opportunity.
Patent the Product Idea
The moment you are able to patent your idea, you should do it to protect the intellectual property rights of your company. You should patent your idea in other countries you are going to target. How does this help? Well if your product is duplicated by China, you can prevent such products from being sold in Canada and United States by proving that you own the patent to the product.
Trademark registration process on the Chinese market
To start the trademark registration process, the company must either directly file an application with the China Trade Mark Office (CTMO) or file the application through the World Intellectual Property Organization (WIPO) which acknowledges trademarks registered worldwide.
Do it fast
The trademark registration system in China operates on a first-to-file system, not a first-to-use basis. Therefore, the faster you can register your foreign company, brand names, and logos the better.
It’s territorial
China has its own jurisdiction. So, as trademarks in China are territorial, to get registered protection you must apply for trademark rights in China mainland, using Chinese characters. For brand protection in Hong Kong, Taiwan, or Macau you’ll need a separate trademark application. And if you’re already registered in the USA or in Europe, well, it will just protect you in the USA or in Europe.
Many foreign companies do a trademark registration process for brand protection only once for China, Hong Kong, Macau, and Taiwan, thinking it’s the same system, and this leads to many trademark violations and infringement claims.
Mind the language
We advise you to develop a Chinese language mark in China and therefore register both the English name and the equivalent Chinese characters as trademarks to avoid wasting time and money on litigation proceedings.
It can be either a literal and phonetic translation of your brand’s name, or a new Chinese name suitable for your brand.
For example, when Starbucks enter the Chinese market, the literal translation of its Chinese name got copied by Xingabake, a Chinese coffee brand. Which led the company to juridical actions. Fortunately for them, they won the case and got compensated around $45,000.
Increase your vigilance
You have to be alert for brand infringement. You may have to check on “cybersquatters”, “trademark squatting” or “trademark squatters” or develop a brand monitoring team to monitor your trademark and your domain name registration and check on the internet for unauthorized brand usage.
Registering the trademark in Chinese characters
Foreign companies entering China should be aware that their trademark in Roman characters will not completely protect them against infringement. The same or similar trademark can be registered in Chinese characters by another business, even if it’s only a literal translation. This is also key to a business’s profitability and image in China.
China has a first-to-file Trademark System
It is important for foreign business owners to understand that China is a first-to-file system, meaning whoever can register a trademark under your brand name in China if you have not done so yet. It does not matter whether or not you are the legal owner of the brands elsewhere.
Indeed, China does not recognize international trademarks even for well-known brands. Just because a brand is recognized in another country does not mean that the trademark has legal protection in China. Instead, businesses must take the extra step and register their trademarks in Mainland China before anyone else does.
Selecting a trademark in China
Trademarks identify the specific or primary use of a good or service. They help consumers distinguish their companies, products, and services from those of others. Trademarks may consist of words, letters, numbers, devices, shapes, color combinations, or a mix of all of these.
To register a legal trademark in China, your selected trademark must meet the following criteria:
- It cannot be the same or similar to the name or flag of a state or international organization
- It must be easily distinguishable from the trademark of competitors’ goods and services
- It cannot discriminate against a nationality
- It cannot promote fraudulent advertising
- It cannot provide a functional definition or refer to a technical effect
- It must be available for registration
Companies can search for existing trademarks to see if there is a match for what they are considering using for their business.
Develop a China-Tailored Policy
This tip is not unique to China but it is important to have a policy tailored to the Chinese system. The policy should cover matters like brand conception and design, registration, marketing monitoring (e.g. conflicting marks; counterfeits), record-keeping, licensing, contracts (e.g. distributors; manufacturers), and enforcement.
Human Resources as your new best friend
Brand infringement awareness is quite low among Chinese people. They may not value a brand the same way we do. So, if you have Chinese employees you need to explain to them the value of IP and brand protection and intellectual property rights and show them that the brand is a valuable business asset worth being protected. Educate them about confidentiality requirements and the consequences of IP violations.
You can also grant access to information according to the job title and function of employees. Control their access to sensitive data and equipment/facilities. And when an employee is leaving your company, proceed to exit interviews to recover sensitive materials and remind them of one more time confidentiality obligation.
Consider jurisdiction
If you provide licenses for third parties to use your product or brand, we advise you to include a clause in the license agreement providing a dispute to be dealt with alternative jurisdiction. For this, Hong Kong may be the best choice. It’s faster and more efficient than what you’ll find in China at the moment.
In case of brand infringement, you’ll get two choices:
- Use the administrative system to enforce your rights without the need to go to court. It’s usually cheaper and quicker. If found guilty, the infringer can be fined and the money earned from its illegal action will be seized.
- Use the juridical system as you’ll do in other countries. Your company will sue the infringer in court which could lead to damages and injunctions. It will give you flexibility, and speed and reduce the risk of adverse publicity. But it’s more expensive.
Among these two choices, we advise you to start with the administrative process.
Work on your Branding and use your fame
In China, everything moves fast but the administration system… registering your trademark in China may take a long time, as the trademark application process is very bureaucratic. We’re talking here about 1 to 2 years according to your industry and products. Also, to avoid wasting time and either start operating on the Chinese market or prepare for your future product launch, here is some advice for you.
China is a country focused on brand reputation. Consumers don’t care where you come from and how famous you are abroad. They probably don’t know anything about it, as they have their own internet landscape and therefore don’t use Google, Facebook, Instagram, or any other Western social media.
Learn more about growing your brand awareness using china’s digital world and discovers the top platforms to do so
How to do? Some simple steps:
- Make yourself visible: build a website in Chinese or open an official account on Weibo and Wechat
- Develop your reputation: open an official account on WeChat, and make some new posts about your product, your story, and how great you are. Get some followers, comments, and product reviews.
- Work on your branding!: Work on Chinese social media. For example, you can open a Little Red Book or Douyin account. Make some videos, use KOL or micro-influencers, and promote your brand as much as possible. If you can make a buzz it’s even better. The point here will be to get as many followers as possible, reviews about people buying your product, comments, etc.
- Make sales: If you have a business license, you can start opening an account on online shopping stores like Douyin (yes, a social media but an online store as well), Tmall, Taobao, etc.
Chinese people mostly buy products that already have some sales. It’s a sign of quality products. Nobody likes to be the first one to buy a product… except your relative maybe. In China, they like two things:
- Official well-known brands
- Products that everybody buys
Chinese consumers follow the mass. In short, if everybody knows your brand, they won’t care about your products’ copy. They’ll want to buy the original one, and show it off to everybody. If counterfeiting is a topic that interests you, we talk about its consequences (negatives & positives) more in-depth in this post.
To summarize how to protect your brand in China, you have two main ways to do so that work together: branding and legal actions.
We are GMA, your Digital Marketing Partner in China
As you could see above, applying for Chinese trademark and IP protection are complicated and take longer. It requires a lot of research and most of the things need to be done in Chinese. There are also a lot of legal nuances to look out for, so it’s definitely not something that can be done in one sitting.
Therefore, we offer you our services. Our experts can help you register your trademark in China after conducting several in-depth research to see if your trademark is available and avoid unnecessary expenses.
We offer brand owners all the necessary help in registering a trademark in China. We can also help you with IP protection and intellectual property protection. We have experience with trademark protections and in-house Chinese professionals, that can go through the whole process in their mother language.
We also offer brand naming services, choosing the best name for your brand in Chinese with the appropriate meaning. If you’re interested in our services or would like to learn more about trademark registration, don’t hesitate to leave us a comment or contact us!
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