Podcast 1: How to Register Trademarks in China; and Battling Trademark Piracy

How to Register Trademarks in China

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[Update: 2020] Recent changes in Chinese trademark law require applicants to have an “intent to use” the applied-for mark, which provides brand owners with another option for enforcing their rights in China. 

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Unlike the United States, which is a “first to use” trademark system, many countries, including China, follow a “first to file” trademark system.  Meaning whoever files a Chinese trademark application first for a particular trademark and goods/services, which ultimately matures into a trademark registration, is considered the legal owner of the registered mark – even if that party had never used the mark in China (or elsewhere).  In most cases, unless your trademark is considered “famous” (and I mean “really really famous“), if someone files a Chinese trademark application for your mark and products first, you lose.     

How to Register Trademarks in ChinaMany cases of third parties registering a company’s trademark in China are the result of trademark pirates; those parties seeking to hold the trademarks of others for ransom.  Even worse, these pirates may even sue the rightful trademark owner and user for trademark infringement in China and seek millions of dollars in damages – simply because they filed a trademark application first.     

Not only do these pirates register the trademarks of others in English but they also register them in Chinese characters, since most people in China do not speak English.  For that reason, it is best practice to register brand names in China in both English and Chinese.  Failure to register trademarks in China can result in loss of rights, loss of market opportunity and/or many years of costly litigation (sometime 4-6+ years) over trademark rights. 

Even if brand owners do not sell their products in China, they should still secure Chinese trademark registrations for their marks if they manufacture products in China for export.  Under Chinese law, trademark pirates may record their registered marks with the Chinese customs authorities in an effort to seize your products at the border.  Once seized, the pirates request ransom in exchange for the release of your products. 

Trademark theft and piracy is an industry in China, as well as some other counties.  Not only should companies consider registering their trademarks in those countries in which they do business and/or conduct manufacturing, they should also reserve certain country domain names that correspond to those trademarks to keep them out the hands of Internet pirates (a/k/a domain name squatters).  

How Can We Help Brand Owners with the Chinese – China Trademark Registration Process? 

  1. Audit your current global trademark portfolio for gaps in trademark protection
  2. Provide a list of “first to file” countries for review
  3. Provide guidance with respect to goods and services coverage
  4. For non-English speaking countries, such as China, provide Chinese versions of your trademarks (provided by English and Chinese speaking trademark specialists)
  5. Review your marks for any negative connotations in non-English speaking countries
  6. File global trademark applications to protect marks vulnerable to trademark piracy

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Trademark FRUTTA DI VITA Confusingly Similar to Registered Trademark FRÜT A VIE Says U.S. Patent and Trademark Office: Put on Your “Judge Hat” and Opine

Another recent trademark decision rendered by the U.S. Trademark Trial and Appeal Board (the “Board”) has, again, highlighted the importance of trademark selection and the intricacies of trademark clearance and trademark infringement analysis.  

In that case, the trademark applicant sought registration of mark FRUTTA DI VITA for “cosmetics and cosmetic preparations; concealers; cosmetic facial blotting papers; cosmetic sun-protecting preparations; and cosmetic sun-tanning preparations.” 

The U.S. Patent and Trademark Office Examining Attorney refused registration of the mark FRUTTA DI VITA on the basis it is confusingly similar to the registered mark FRÜT A VIE for “cosmetic creams for skin care; cosmetic preparations for skin renewal; skin and body topical lotions, creams and oils for cosmetic use; wrinkle removing skin care preparations.” 

FRUTTA DI VITA

    VS.

FRÜT A VIE

                      

When the Applicant appealed the refusal to register its mark, the Board affirmed the Examining Attorney’s rejection based primarily upon the following four trademark principles and findings: 

  1. The goods listed in the parties’ respective filings are identical or essentially identical. 
  2. Since there are no limitations set forth in the parties’ respective filings as to the channels of trade in which their goods travel (i.e., professional buyers vs. retail consumers), the goods are presumed to travel in all normal (thus overlapping) channels of trade.
  3. Buyers of the parties’ respective goods are presumed to be the same/overlapping. 

Applicant argued that the applied for mark is used exclusively for higher-priced anti-aging skin preparations and not for general cosmetics or general skin care preparations and the buyers for its goods are well-informed consumers, thus consumer confusion between the marks is unlikely.  Unfortunately for Applicant, however, the USPTO must compare the parties’ respective goods as identified in their trademark filings, which, in this case, were presumed to be identical or essentially identical cosmetic and skin care preparations and also presumed to travel in the same channels of trade to the same class of buyers. 

  1. The marks FRUTTA DI VITA and FRÜT A VIE are similar in terms of appearance and sound. 

During its analysis of the parties’ respective marks, the Board concluded that Applicant’s mark FRUTTA DI VITA translates into English as FRUIT OF LIFE, while the cited mark FRÜT A VIE has no direct English translation; thus the “doctrine of foreign equivalents” would not apply in the case. 

However, the Board held that the parties’ respective marks are sufficiently similar in terms of appearance and sound so as to cause a likelihood of consumer confusion – or trademark infringement.  The Board stated the following: 

  • “Thus, while in some respects, the marks differ in appearance, their basic structure (including first and last words beginning FRUT— and VI—, respectively) and their general appearance of foreignness are more likely to be recalled by consumers than the more detailed and specific differences between them.” 
  • “Finally, we find that the marks are also similar in their sound or pronunciation.” 

The Board correctly noted that the test for whether marks are likely to cause consumer confusion as to the source of goods and services is not based upon a side-by-side comparison of the marks, but rather based upon the recollection of marks by the average consumer.    

Two important trademark principles applied in this case are that (1) when the goods or services of the parties are identical or essentially identical, the marks of the parties need not be that close or identical to support a finding of likelihood of consumer confusion – or trademark infringement and (2) trademark infringement analysis with respect to the marks is not based upon whether there is another party using the same mark, but rather whether there is another party using a confusingly similar mark – one that would likely cause consumer confusion as to the source of the parties’ respective goods or services. 

One can certainly check the USPTO database to see if someone has already filed an application for a specific mark with a specific spelling.  However, one must also check the USPTO database for third-party marks that are confusingly similar to a proposed mark.  Also, since U.S. trademark rights are created based upon actual use in the marketplace and not registration, one must not only consider registered trademarks (state and federal) but also common law (unregistered) trademarks and even business names. 

When brand owners are selecting new brand names / trademarks (including logo designs), they should consider my rule of “The Four D’s of Trademark Selection.”    

Brand name selection does not have to be that difficult.  Proper consideration of brand names does take time and thought-provoking analysis, however.  Not considering the rule of the Four D’s could potentially prove fatal for a company’s new product launch and, as I have said before, could be the difference between brand success and failure.