Timing Your China Trademark: Not Too Soon and Not Too Late.

China law issues for business speech

China trademarks. Meet Goldilocks.

In going through old emails I found one I wrote to a client who was seeking to secure Chinese government approval to be able to sell its product into China. The client wanted to know if it should register to secure a China trademark for its brand name and logo even though there is a very good chance the Chinese government will not allow that product to be sold in China.

The client did not want to spend money on trademarks from which it might never benefit (if its product were never allowed into China), yet at the same time, it did not want someone to beat them in registering its brand name and logo as China trademarks and thus preclude it from using its “own” brand name and logo in China.
Our advice was essentially as follows:

You definitely will want to register your brand name in China before you let anyone know you will be using that brand name in China.  And you definitely will want to register your brand name as a China trademark before you contract with anyone in China to have them distribute your product.  Beyond that though, I think you should just weigh the cost of the trademarking (the brand and the logo) against the odds of someone going off and registering those before there is any indication that you will be using those in China.  And since your product name is pretty unusual and also regional within the United States, the odds are pretty good that nobody will register it in China if you are able to keep it a secret that you are going to China. This assumes that you have not and will not need to reveal your brand name or your logo to the Chinese government to get its approval of your product.

Then I reviewed another email from an inventor who is so convinced that his invention will be a success that he wanted us to trademark the name of it in China right now, even though he does not anticipate the product itself going to China for another five to six years.  I wrote him back to tell him that registering a China trademark now without using it during the next three years is generally not a good idea.  The reason this is not a good idea is because China’s trademark law provides that if a registered trademark has not been used for three consecutive years, it may be cancelled for non-use.

The key to registering your trademark in China? Registering it not too late and not too soon.

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