According to China’s Trademark Law, the following types of trademarks are protected in the Middle Kingdom: word, figurative, or word and figurative, among others. Despite appearances, deciding which version of a trademark to apply for is not so simple and requires analysis. Find out the difference between a logo and a trademark, and how a well-thought-out strategy can ease the process of trademark registration!
In order to better understand the difference between the two terms, it is worth explaining what a trademark is. In simple terms, a trademark can take the form of a symbol (such as a logo), a phrase (which can be the name of a company), a combination of the two, or even a melody. In general, it is a form of sign that makes it possible to identify a company’s goods and services. Every manufacturer wants to stand out from the competition. This is why it is important to legally protect the identity of a product by registering a trademark. This gives a particular company the exclusive right to use a previously registered trademark. One of the most interesting examples of building an image from scratch in China is the case of DeRUCCI. Find out more about the story of the brand’s introduction to the Chinese market – read more!
The trademark not only allows for consistent branding in China, but also serves a number of other functions. Registering a trademark and then declaring it to the customs authorities (GACC) prevents counterfeit products from being imported or exported. Obtaining a locally-issued Chinese Trademark Protection Certificate allows for quick initiation of the entire administrative process resulting from trademark infringement, as well as efficient communication with the local authorities. It also enables e-commerce for global companies. Legal protection of branded goods or services is very important for the identification of a particular manufacturer. It is advisable to take care of this in advance, especially as China has adopted “first-to-file” principle. If you are planning to enter the Chinese market, register your trademark before someone else does – the process of regaining rights to a trademark can be both time consuming and expensive
A word and figurative mark consists of verbal and graphic elements, usually in the form of a name and a logo. Note the Trademark Partners mark – this is a typical word and figurative mark in which the figurative element is a winged lion. The word element consists of the words “Trademark Partners www.trademark.partners”.
There are several types of trademarks, including, for example, the word mark, which differs from the word/figurative mark by the absence of a graphic element. In this case, the essence of the mark is the word mark in the form of typical fonts, which do not in themselves constitute a unique distinctive element. If our sign did not contain the image of a lion, the words “Trademark Partners www.trademark.partners” would constitute a classic word mark.
A figurative mark is also a form of mark that can be registered, including in China. Let’s take our figurative mark as an example again. If the distinctive winged lion were the whole of the Trademark Partners mark, it would be a figurative mark. In such a situation, it would be filed under the same rules as a word or figurative mark.
The term trademark is often used interchangeably with logos. However, there is a difference between the two. The former – as mentioned above – refers to a sign that identifies the producer of certain goods or services and is legally protected in a particular territory, while the latter is a graphic representation of a mark. Consequently, your company’s logo does not have to be a trademark, but it can be part of it. However, it is not necessary to register the mark. In other words, a logo can be registered as a trademark and, if registered, it will remain protected by law.
Chinese law allows the registration of a word mark, a figurative mark and a word and figurative mark. Obviously, protection rights for a word and figurative mark provide the most protection. Therefore, it is best to apply for the mark in this form. However, sometimes it is better to apply for protection of a word mark rather than a word and device mark.
The perfect situation occurs when the filing of a trademark application in China is preceded by a trademark purity examination, which consists of checking whether the trademark is even eligible for protection in light of other prior applications. If you are a business owner and require this examination or the advice necessary to register a trademark, the professionals at Trademark Partners are here to help. Enlisting the help of experienced professionals will save you time – their knowledge will make the whole process not only smooth but also efficient, avoiding mistakes that are often made by people acting on their own without knowledge of the legal aspects of patent protection.
If your mark in figurative form is not sufficiently distinctive, i.e. it is not a unique figurative form that would make it unique from other marks, the office may refuse to register the trademark. In that case, the best solution is to apply for protection of the word mark only.
When considering applications for trademark protection, the Chinese Trademark Office (CNIPA) seeks to prevent confusion among customers. In practice, this means avoiding a situation where someone could be misled as to the origin or authenticity of a trademark.
Again, take Trademark Partners as an example. If another company were to apply for a trademark in which the winged lion had different colours and also, for example, a crown, then both trade marks would give rise to doubts as to the origin and authenticity of the two trade marks, regardless of the transcription of the textual part of the trademark. Furthermore, if the company also provided trade mark services, such an attempt to register would most likely be refused by the Office.
There is another aspect to consider. When a trade mark is filed in both word and figurative form, the Office examines it for similarity in both word and figurative form. This means that there may be situations where an application fails because the Office considers the graphic representation of the mark to be too similar to another mark. Similarly, similar wording or spelling will also be grounds for refusal.
Each Office considers decisions independently, based on the current state of the trade mark database. The Office’s decision cannot be predicted, but the chances of obtaining protection should be maximised through good pre-filing analysis. The specialists at Trademark Partners have enough experience to advise you effectively in this area. If you just need assistance, please contact us.
