Through WIPO or CNIPA - Where Should My Chinese Trademark Application Be Filed?
The idea of accessing a consumer society of 1.3 billion souls appeals highly to entrepreneurs the world over. However, finding success in the Chinese market is not for the faint-hearted. Not only are there language barriers, significant cultural differences, and business etiquette to manage, those looking to market their product or service in China must come to grips with a host of unfamiliar social media platforms such as WeChat, Weibo, iQiyi, and Douyin, to name but a few.
When it comes to filing trademarks, companies can apply in one of two ways: through the World Intellectual Property Organization (WIPO), using the Madrid System; or locally, through the China National Intellectual Property Administration (CNIPA).
There is now a growing trend for applicants to submit through the CNIPA rather than the WIPO. When it comes to Chinese trademark filings, according to TrademarkNow data, the percentage of WIPO applications has gone down from 3% in 2011 to 1% in 2018. This article examines some of the reasons for this and ways companies can minimize their risks when filing with the CNIPA.
Language Challenges and Chinese Brand Recognition
With a population of 1.3 billion and a written history which extends back as early as 1250BC, China, whilst open to the outside world, has a uniquely rich cultural heritage. Therefore, big players have adopted other names for the Chinese market. In the land of the Red Dragon, BMW is known as Baoma (宝马), Volkswagen goes by Dazhong (大众), and Weiruan (微软) is Microsoft. This is not as unusual as it sounds; much of China’s population has never heard of the Latinised version of these brand names.
Furthermore, registering your trademark in Roman characters will not necessarily protect you from infringement. Rival companies can register the same or similar mark in Chinese characters, if you do not proactively do so.
By directly submitting a Chinese trademark application through the CNIPA, foreign applicants are required to use a registered agent. This gives them far more control over the process and the ability to obtain advice regarding the registration of their mark in Chinese characters. This can help avoid unfortunate incidents such as that of Coca Cola. The famous brand name does not translate directly into Chinese. At one time, the drinks giant registered its product as Ke Dou Ken La, which translated into something like ‘bite a wax tadpole’ (蝌蚪啃蜡). This has since been corrected to a name that translates to “delicious happiness” which most would agree is reflective of their brand.
Enforcing Your Rights in China
Enforcing your trademark rights in China can prove challenging. You will need to bear in mind that, in practice, the Chinese enforcement authorities (administrative and judicial) require the submission of a CNIPA national trademark certificate; a WIPO certificate will not be accepted. You must specifically request a CNIPA registration certificate to prove your trademark rights. These can take up to five months to be issued. Furthermore, Chinese litigation can prove difficult due to inevitable language and cultural differences, which can add to the expense and stress of going to Court.
The CNIPA splits each Nice class of trademarks into a series of subclasses unique to China. For the purposes of protection, each subclass is treated uniquely; filing under one subclass does not guarantee protection under any other subclass.
You, as the filer, must determine the subclasses your trademark will be filed under. When filing with the CNIPA, you are given the chance to pick the subclasses you wish to protect your mark under. However, if you file under WIPO, a CNIPA trademark examiner will decide the subclasses your mark will be filed under, without your consultation. In addition, the examiner may not necessarily be a confident English language speaker/reader, making it very easy for the wrong class to be picked.
Probably the most famous case of a trademark being misfiled is that of Apple’s “iPhone”. In 2002, the tech giant filed an application under Class 9 (Computer Hardware and Software), expecting it to cover cell phones. However, cell phones were, in fact, covered under a different class. Chinese company Hanwang Technology, quickly applied for the trademark “i-phone” under the correct category. The result – Apple had to pay Hanwang Technology a handsome (undisclosed) price for its trademark, which it finally obtained in 2010.
Protect Your Interests When Filing Trademarks in China
The above illustrates why filing with the CNIPA is, at present, more advantageous than the WIPO route. However, businesses should be aware that regardless of the path they choose to facilitate their Chinese trademark, investing in pre-application due diligence is imperative. Not only will it reduce the risk of your mark being rejected, but it could also reduce your final legal costs. It is relatively simple to run a trademark clearance search when first considering filing and in this way you can check that your mark is unique and complies with China’s trademark laws.
As China continues to strengthen its trademark laws, applicants will need to apply greater due diligence to ensure the process is not frustrated. The first step to a successful trademark registration in China is to check the viability of any mark you plan to register by conducting a powerful trademark search.
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