The Chinese “Super Trademark”: A Creative Strategy for Overseas IP Protection

By Laura Kees
August 16, 2018

“The ‘super trademark’ is a nickname used by some intellectual property practitioners, not a formal term. But it can offer significant advantages.”

Enforcement of trademark rights in China is an ongoing issue faced by numerous corporations.  Invalidating or canceling a trademark registration in the Chinese market is time-consuming and costly.  The best way to defend your company’s valuable intellectual property assets is to put in place as many protections as possible.  If your company owns a creative design mark, consider going beyond the standard trademark registration and getting the “Super Trademark” by obtaining copyright registration for this artistic design element.

The current trademark protection system in China is very different from the U.S. and European systems, and can be frustrating for the western client.  First, registration is mandatory to establish trademark rights, as China is a “first to file” instead of “first to use” jurisdiction.  Second, unless the nearly identical mark in the same class of goods/services is infringed, the Chinese courts generally don’t find infringement.  This presents a serious issue for companies as it can be difficult to enforce rights in related goods/services or in areas of natural expansion for the company.

The covered goods and services in a trademark application are grouped into classes based on the Nice classification system with further subclasses, and protection generally covers the exact classes and subclasses protected.  This complicated subclass system is unique to China. There are 45 classes, and each class added to an application comes with additional government fees.  For example, Class 9 covers various goods including software.  If a company wants to cover software, it then needs to choose from 24 additional subclasses. Thus, it can be a very expensive endeavor to have a blanket filing covering all classes and subclasses.  Further, the trademark registration process takes time as it can take a year or longer for your trademark application to mature to registration.

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According to the World Intellectual Property Association (WIPO), China far and away leads the world in the number of trademark applications filed annually.  For example, in 2016, China accounted for 3.7 million of the 7 million trademark applications filed worldwide. The U.S., by comparison, was a distant second with 545,000 trademark protections, according to WIPO.

China also is a hotbed for trademark-related bad faith filings, as there is an industry of professional trademark squatters that file for third-party trademarks, especially for foreign brands.  These squatters simply need to file an application, and don’t even need to prove use in order to obtain a registration.  Further, the squatter’s registration isn’t subject to cancellation for non-use until three years after registration. Even if you decide to oppose a trademark squatter, your chances of winning are less than even. In 2016, for example, there were 57,274 trademark oppositions filed in China, according to China’s Board of State Administration for Industry and Commerce, with a 30 percent success rate.

If money is an object, and time is of the essence, how does a company best protect its creative design marks in China?  Consider filing a copyright or a “super trademark” to protect your design mark.  The “super trademark” is a nickname used by some intellectual property practitioners, not a formal term. But it can offer significant advantages. Unlike the trademark application, there are no restrictions on the designated goods and services covered in a copyright application. The “super trademark” strategy provides copyright protection for a design mark (which covers all goods/services) versus trademark protection (which covers only the limited goods/services that are applied for in the application).

Further, the examination period for copyrights is relatively short.  If there are no objections during the application process, you might receive your copyright registration in one or two months.  The copyright registration certificate can be used as proof of rights for complaints and cease and desist letters. Copyright is a relatively cheap way to cover all classes; it’s a bit of a loophole for China’s strict prosecution system.

Please note that a copyright must be filed with the Copyright Protection Center of China (CPCC), whereas a trademark is filed at the China Trademark Office (CTMO).

Unlike trademarks which must be filed to have protection, copyrights are subject to voluntary registration.  Copyright protection applies as soon as a design mark is created as long as the design mark is original, fixed in a tangible medium of expression that is capable of being reproduced, and has some minimum level of creativity.   However, registration is highly recommended as it strengthens your position should you have an infringement issue.  Further, it is best to file a copyright registration in China immediately after the creation of a logo design as it will create prima facie evidence of copyright ownership.  Early filing also presents strong evidence of the prior creation of your work, which is helpful if enforcing your trademark in trademark opposition proceedings.

Trademark registrations are valid for ten years and require renewal every ten years.  Copyright registrations do not require renewal and are valid for the life of the individual author plus 50 years.  If the author is a legal entity, the copyright registration is valid 50 years after the first publication of the work.

A downside to a copyright action is the standard of similarity is higher than in trademark actions as the pirated version must be identical or nearly identical.  Therefore, it is helpful to have both trademark and copyright protection for your design marks and one method should not be used in place of the other.

Already have an issue in China where a third party is using your design mark and only own a U.S. copyright registration for your design mark? Unfortunately, there is no such thing as an international copyright.  However, China is a member of multiple international treaties and conventions such as the Berne Convention for the Protection of Artistic and Literary Works and the World Trademark Organization (“WTO”) with adherence to the TRIPS Agreement.  Application of these conventions should be explored with your local counsel.

 

Base image from Deposit Photos, with modifications by Renee C. Quinn.

The Author

Laura Kees

Laura Kees is a trademark and copyright attorney in Womble Carlyle’s Atlanta office where she concentrates her practice on trademark and copyright portfolio management, counseling clients on the risk associated with adoption of proposed names and marks, evaluating when applications for domestic and/or international registration should be filed and advising how and when to maintain those registrations. Laura works with a variety of large portfolio clients and utilizes an international network of IP attorneys to ensure that those clients’ trademark and copyright assets are adequately protected through registration in jurisdictions in which the client does, or anticipates doing, business.

For more information of to contact Laura, please visit her Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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