Trademark Imitation in China
China is notorious worldwide for brand imitation. Many cases illustrate the severity of this issue. For example, a company may participate in Shanghai Fashion Week once, only to find out later that their trademark has already been registered when they try to enter the Chinese market. In other cases, an eager Chinese agent may offer to import large quantities of products, but upon trademark investigation, it is discovered that the agent has already filed the trademark themselves. Companies often have to resort to negotiations, including paying significant sums, to reclaim their trademark rights.
Some Chinese brokers specialize in registering Korean brand names and publicly selling them through online trademark trading platforms. When legitimate trademark owners express interest in purchasing these marks, the brokers often demand triple the price they would charge Chinese buyers, knowing the brand owner has no choice.
Additionally, many imitators in China not only register trademarks but also actively use them, producing and selling products under the copied brands within the country. This makes legal recourse extremely difficult.
Types of Trademark Imitation in China
- Registration of the Same Trademark in Different Classes
Imitators often register well-known brands under unrelated product categories. For example, a popular Korean cosmetics brand (Class 3) might be registered under apparel (Class 25).
- Registration in the Same Class for Non-Related Products
While products within the same class may not always be related, imitators exploit this by registering similar trademarks for unrelated items within the same class. For instance, computer software and weighing scales are both classified under Class 9 but are entirely different products.
- Mass Registration of Slightly Similar Trademarks Across Classes
Imitators take advantage of Chinese characters by registering trademarks with similar pronunciations but different characters, or vice versa. In some cases, a single entity might register over 100 variations of a trademark across multiple classes.
Strategies for Dealing with Trademark Imitation
- Check Trademark Availability and File Simultaneously in China and Korea
Although small and medium enterprises may not plan for international expansion at the start, it is crucial to consider simultaneous trademark filings in China and Korea. China is a high-risk market for imitation, making early registration essential.
- File Across Relevant Classes and Broadly Specify Products
In China, a proactive trademark strategy is recommended. Companies should file for multiple related product categories. For example, a cosmetics brand should also cover cleaning products, toothpaste, fragrances, beauty services, and advertising. Even categories like accessories, bags, and clothing should be considered to preempt imitation.
- File Multiple Trademark Variations
If financially feasible, file for variations of the trademark. Chinese companies, such as Baidu, own over 10,000 trademark registrations. This strategy is particularly important for Chinese-character brands, where small variations in radicals or strokes can result in different registrations.
- Actively Address Imitation through Legal Procedures
If an imitated trademark obstructs your business, it is better to engage in legal proceedings rather than avoiding confrontation. Trademarks that have been published for opposition can be challenged within the three-month opposition period. Even if registration is completed, invalidation procedures can be initiated, though this can be costly and time-consuming. The Korean government offers support for such disputes through programs run by local Intellectual Property (IP) centers, the Korean Intellectual Property Protection Agency, and IP-DESKs established by KOTRA in China. These resources can help with legal procedures, including both civil and criminal actions.
- Secure Trademark Registration by Any Means Necessary
It is essential to ensure that key trademarks are registered in China, even if not all categories can be protected. Obtain registration for the primary brand used in business operations, even if this requires purchasing or negotiating for the trademark.
- Do Not Give Up
International trademark applications may face rejection for various reasons, including differences in interpretation of distinctiveness and similarity. This is especially true in China, where many Chinese characters have similar pronunciations or appearances. Furthermore, inconsistent examination practices complicate registration predictions. Many Korean companies give up after an initial rejection. However, it is advisable to at least file an appeal before abandoning the application. If a prior registration is cited as a reason for rejection and has not been used for over three years, a non-use cancellation request can be filed. You can also refile the application with minor modifications. Trademark examination in China is unpredictable, and what is rejected once may be approved under different circumstances. Conversely, if you abandon the application without appealing, a third party may quickly register a similar mark.
Final Thoughts
If you plan to sell products in China, do not give up on trademark registration. Persistence is key to protecting your brand and business. Ensure that your trademark is officially registered to avoid potential legal and business risks.