Guangzhou trademark registration lawyer provide the following tips regarding the trademark registration in China. Please keep in mind that you are advised to retain our Guangzhang trademark lawyer's service to apply for a trademark.
Who May File A Trademark Application?
A trademark application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark. Foreign applicants (those residing outside the China) must designate a "domestic representative." A domestic representative is a person residing in the China "upon whom notices of process may be served for proceedings affecting the mark." The domestic representative will receive all communications from the CPTO unless the applicant is represented by an attorney in the China.
We strongly recommend you use an attorney who is familiar with trademark maters to file your application to register a trademark. Although you have access to the trademark forms, and although the forms may appear simple to complete, simple errors can have devastating effects, including significant delays in the time to register the mark, potential cancellation of the mark, and potential abandonment of the mark. This really is not a do-it-yourself project.
Searches For Conflicting Trademarks.
A trademark applicant is not required to conduct a search for conflicting marks before using a trademark, or applying to register a trademark. The most important reason to do a trademark search is to avoid liability from trademark infringement lawsuits. The second most important reason is to identify potential prior users, so you will not have to incur the time and expense associated with changing a name you have invested time and money in at a later date. Third most important reason comes into play if you are planning on registering a mark with a trademark office. If the mark you have attempted to register is the same, or "confusingly similar" to another company's registered trademark for identical or similar goods and/or services, the application will be denied and the registration fees are non-refundable.
Failure to have a proper trademark search conducted before using a name, or filing either an "in-use", or "intent to use", trademark application can have severe consequences. First, if use occurs prior to a proper search being conducted, a trademark owner with prior rights in and to the mark you began using may require you to immediately cease using of the mark, destroy all paper, advertising materials, and products containing the mark, and potentially sue for monetary damages such as lost profits, as well as other statutory damages for Willful Infringement which includes attorneys fees and costs and treble damages. The courts have considered failure to have a search conducted to be a factor in finding "willful infringement". If you are merely filing an "Intent to Use" application, and the use of the mark has not commenced, one may argue that the liability is minimal because without actual use of the mark there are no profits. However, various courts have found such defendants liable for "Willful Infringement" on the ground that they intentionally ignored the advice of counsel who recommended a trademark search be conducted.
Use of the "TM," "SM" and " ® " Symbols.
You always want to apply the proper notice to your mark. If the mark is registered at the federal level (e.g. you have received a final registration certificate from the CPTO) you may apply the ® symbol, regardless of whether the mark is for goods or services. However do not use the ® symbol if your application is still pending. The federal registration symbol evidenced by the R in a circle should only be used on goods or services that have been formally registered with the China Patent and Trademark Office. Use of the ® symbol absent a federal registration is considered deceptive and may result in a mark being refused registration at a later date.
Where registration has not been accomplished at the federal level, you should use the TM symbol if the mark is used to identify goods or products, and the SM symbol if the mark is being used to identity services. The TM and SM symbols may even be used if the mark is not registered at the natinal level.