Trademark Protection in China – New Technologies Simplifying the Process for Brand Owners

Alexandra Chopenko

Kangxin Partners, P.C, Foreign Consultant

Chinese rise on the global stage has been accompanied with foreign brands flocking to this market to tap the incredible potential of the Chinese consumers, and this is not a new story. As the market develops, so do the numbers of trademarks being registered, and WIPO’s filing statistics are evidence that the market has seen astronomical growth, both from domestic and foreign filers. Seems that every year news headlines within the IP industry are touting another phenomenal growth of Chinese IP, be it patents or trademarks, filings within China or outside its borders. As in many areas and industries which are experiencing rapid development in China, legislation is being amended to reflect and suit the changing environment; in IP, ensuring registered property protected is a top priority—it is an issue emphasized at the very highest levels of government and a topic of much concern for foreign IP owners seeking to enter the Chinese market. Though in recent years official bodies governing IP have updated laws and reshuffled offices to modernize the IP system, major challenges to brand owners still exist, ranging from bad faith filings to blatant infringement. It is an old adage that China has a poor reputation for IP protection, but that is a result of lack of brand owners’ taking steps to protect their IP, not an integral feature of the system. Navigating the Chinese trademark system without prior research and experience can be a major deterrent to registering their logo or other mark in this lucrative market, which leads to more problems down the road. In a Chinese market, it is hard to predict which brands can go vi r a l and explode seemingly overnight—as the most recent case with the athletic apparel brand Champion, for example— so being proactive, acting quickly and with a clear strategy in mind, as well as registering your brand there ahead of time is a prudent decision.

Navigating this complicated system requires expertise, time and effort, and it is only natural to seek an easy solution. The rise of artificial intelligence, machine learning, image recognition, blockchain, big data, and other advancements in technology provide an opportunity to achieve just that—and thus options for trademark prosecution and management online have sprung up globally. Many of those are a DIY-type service that allow any individual to file, purportedly allowing brand owners to save on attorneys’ fees. The fatal flaw of using such services, however, is at their core—becoming your own trademark lawyer is akin to taking apart an iPhone yourself to save money on repairs from the official store—unless you’re an Apple engineer, it probably won’t end well, and the lack of expertise will bring about costs much higher than what you expected. Similarly, trademark prosecution without proper guidance can end in disaster for your brand down the road—registration in the wrong classes, no follow-up with renewals, missed deadlines and a slew of other issues will cost you much more than what you save when filing with a DIY service. 

But the effective technology exists and is improving every day and not using it would mean falling behind the times, so what is a brand owner need to do? Seeking the services of a traditional law firm is absolutely still on the table, but the attorney service fees can pile up quickly, especially if a trademark portfolio is extensive. As with most things, the best solution is a combination of expertise and new technologies—such a meeting of the minds in the forms of web-based platforms, which use cutting edge technologies like artificial intelligence algorithms to recognize image features, but at the same time backed by attorneys with combined decades of glob l experience. Such platforms save brand owners money on attorneys’ fees all the while not leaving their marks’ registrations up to chance.

What steps must one take to register a mark in China? As in any jurisdiction, it is prudent to conduct a clearance search to learn about the landscape surrounding your mark—it is also here, where many brand owners discover the unpleasant fact that their mark has already been registered by someone else. China is a first-to-file jurisdiction, meaning that the first individual or company to file for trademark registration is the rightful owner of the mark; this is unlike many other jurisdictions where the entity who first uses the mark can lay claim to it. This feature of the China Trademark Law has led to countless cases where foreign brand owners have few tools to return their mark from so-called “trademark squatters”, individuals who make money by registering brands before their rightful owners and subsequently requesting payment for the rights transfer when the brand owner demands to return their trademark. Considering this fact, conducting a clearance search i s clearly an important f i r s t step to take in your trademark registration journey. It is also important to conduct this search prior to application as the CTMO examiners will conduct the same search across their database when examining the trademark registration application, looking for prior marks which may be considered similar not only in appearance but also in their registered classes, as similar marks may create the likelihood of confusion among consumers. Generally, these conflicting marks can be found prior to application, so conducting a clearance search is important to avoid lengthy back and forth between the CTMO, or an outright refusal of your mark upon registration, thus saving brand owners money, time, and ease their frustration.

Traditional trademark clearance search can be a lengthy process that requires wading through vast amounts of data and having expertise to identify marks which are not obviously the same but may cause confusion— all requiring time, money, and relevant training. This process is transformed with the use of AI on a web-based platform. The trained algorithm searches across a database of registered and published marks, identifying similarities in image features against the searched mark. Not only does this solution shorten the clearance search from days to seconds, but also the likelihood that the algorithm will find similarities that a human might miss, is enough reason to give it a try. Some of these new AI management platforms offer such searches for free, so there really is no excuse for brand owners to not upload their marks and see what’s out there.

The search results are comprehensive and give users an in-depth look at the landscape surrounding their mark. The feature that the AI algorithm adds is the similarity ranking of every result. The algorithm has been trained to recognize image features between marks that may be considered too similar and thus would bar the searched mark from registration, or at least cause some difficulties. Being aware of this is invaluable for brand owners, as it helps to define what they can expect when registering their mark in China. Certainly , the system is not a human expert that can advise on strategies and provide in-depth analysis of the search results. This is where the legal experts come in—attorneys with years of experience in trademark prosecution, and this is precisely the advantage of these “middle ground” platforms—users have the advantage of both the AI technology and the expertise of a traditional law firm. To help make sense of the search results (should a user need such guidance ) , for example , an availability analysis is available. The mark a brand owner seeks to register will be analyzed by experienced attorneys who will compile advice for registration within a day, so not a moment of valuable time is wasted.

Once there is a clear understanding that a mark is available, it is time to register it. Rules for Chinese trademark registration can be complicated to those encountering the system for the first time. On an online management platform, the application process is made clear, separated into four steps—filling out the mark’s description and applicant’s information, payment, document upload and submission. China has several peculiarities in regards with registration, one of which is its subclass system. Though China has adopted the Nice Classification for its goods and services, the unique subclass system further breaks down the classifications—thus goods or services registered in one class, but in different subclasses are considered different. Considering this issue of which subclasses to register your product in is crucial for success in the Chinese jurisdiction, but again, it is a time-consuming task. Brand owners should seek online IP management platforms that solve this issue in the simplest way— when filling out the trademark information, the system should allow registrants to search and select a list of standard goods & services with the correct subclasses, saving time and reducing the risk of encountering office actions, which further shortens the time of trademark prosecution.

The application process also requires a detailed explanation of the mark–its color, design, description of non-Latin characters, if any, etc. Navigating this requires clear and comprehensive explanation, as well as human expertise to check over the application after it is submitted to make sure all is filled out correctly. This check ensures that the CTMO will not request further amendments to the application, thus further shortening time before the mark is registered and secure from infringement.

Once a mark is registered, what is next? Is important to keep abreast of developments surrounding your mark, to stay alert and act quickly should an infringer seek to register a mark which may potentially disrupt your business? This can be accomplished with a trademark monitoring service, and this is another field in which AI can serve brand owners. The same technology which simplifies clearance searches can be used to monitor registered trademarks—the AI scans across newly published marks in a class specified by the brand owner, comparing the features of the monitored mark to identify if someone is intending to register a mark which may infringe on the brand owner’s existing mark. This information is then compiled, and a report is sent to the IP owner weekly, so should a potential risk to a trademark arise, action is taken quickly. Filing for invalidation can also be accomplished from the platform— if a monitoring report flags a trademark sufficiently similar to the monitored mark, the brand owner may instruct the trademark attorneys to initiate an invalidation suit. This is yet another example of how the AI technology can be seamlessly integrated into traditional trademark matters and combined with professional knowledge and expertise, saving time and money in the process , for everyone involved.

Many newly sprung online platforms only offer clearance search, or only registration, or only monitoring services. What is a brand owner seeking to save money to do, and find multiple platforms and manage trademarks across three different websites? Hardly an efficient use of time— finding a comprehensive platform that is backed by experienced legal professionals should be the way to go. Kangxin eService Platform ( eservice . kangxin . com) includes not only the basic trademark management tools, but also a full range of solutions like trademark renewal, assignment, change of name or address, and opposition. Giving a full overview of the trademark portfolio, the platform also includes updates on any official documents issued regarding filed marks, as well as their case updates and official deadlines.

Finding a tool that is comprehensive is important, but it also must be a smart tool— one that is developed using the latest technologies such as AI, to maximize its use for your brand strategy. However, AI is simply a tool to speed up routine, time-consuming tasks, and complete them more efficiently and on a larger scale than a human might; what AI cannot do is provide personalized service, nuanced advice and map out a strategy for success—that is the realm of the experts. Finding a solution for your trademark management that incorporates both cutting edge technology and personalized service with professional expertise is an important step to take to protect your brand in China and globally.

Using trademark management tools online is an inevitability that brand owners and trademark attorneys must face sooner rather than later. Using them wisely and using trusted services with licensed professionals is integral to brand owners’ success. There is always a need for the human touch, but you need to use the strength of technology for an effective online enforcement strategy.