5 differences between trademark law in the US and China

Trademark laws and registration processes vary from country to country. Each country has its own laws and procedures for registering and protecting trademarks, and these laws may differ significantly from those in other countries. The United States and China are among the most popular jurisdictions for trademark registration in the world due to their strong legal frameworks, well-established trademark systems, and high levels of protection. However, there are also significant differences between the process of trademark registration in these jurisdictions.

By

Igor Demcak

Trademark Offices

The United States Patent and Trademark Office (USPTO) is the federal agency responsible for registering trademarks in the US. It examines trademark applications, issues registrations, and maintains records of trademarks. The agency also provides guidance on trademark law and maintains a variety of resources to help individuals and businesses protect their trademarks.

The China National Intellectual Property Administration (CNIPA) is the agency responsible for the registration and administration of intellectual property in China, including trademarks. It examines trademark applications, issues registrations, and maintains records of trademarks. While there is no subnational protection in mainland China, it is worth mentioning that Hong Kong and Macau have their own trademark systems, with trademarks registered in mainland China having no validity in these two special administrative regions (and vice versa).

Trademark priority

In the US, trademark rights are based on the first-to-use principle, meaning the first person or company to use a trademark in commerce has the right to use it in that geographic area. In China, however, trademark rights are based on the first-to-file principle, meaning that whoever files a trademark application first, regardless of whether they have used the trademark in commerce, has the right to the mark. 

Foreign businesses wishing to register their trademark in China should do so as soon as possible, as the first-to-file trademark approach in jurisdictions such as China has significant shortcomings, as it allows for proliferation of trademark squatting.

Examination process

The examination process for trademark applications is different in the US and China. 

Time: In the US, the examination process can take several months to over a year, depending on the complexity of the application. In China, the examination process can be completed relatively quickly, with an average time of around 9 months.

Fees: In the US, the examination fees are generally higher than in China (approximately $525 per registration), and there are additional fees for filing extensions or responding to office actions. In China, the examination fees are lower (approximately $44 per registration), but there may be additional costs associated with responding to objections raised by the examiner.

Use requirements

In the US, there is a requirement to use a trademark in commerce and provide a Statement of Use (SOU) to maintain trademark rights. Furthermore, a suitable form of a specimen demonstrating the use in commerce needs to be supplied for all classes defined on the trademark application. In China, there is no such requirement, and trademarks can be maintained indefinitely as long as they are renewed on time.

Protection of unregistered well-known trademarks

In both the US and China, protection of well-known trademarks is a critical issue for companies seeking to maintain and enhance their brand value. However, the legal frameworks and approaches to well-known trademark protection differ in these two countries.

In the US, well-known trademarks are protected under the Lanham Act, which prohibits the use of marks that are likely to cause confusion, mistake, or deception among consumers. This protection extends to trademarks that are famous or well-known, even if they are not registered in the US. To establish a trademark as well-known, a company must show that the mark has achieved substantial recognition and fame among relevant consumers. In addition to the Lanham Act, US companies can also seek protection for their trademarks through state and common law. This protection can be particularly valuable for companies with marks that may not meet the strict requirements for federal registration but still have substantial value.

In China, well-known trademarks are protected under the Trademark Law, which provides for a broader scope of protection than in the US. Chinese law recognizes "well-known trademarks" as marks that are widely known to the relevant public, regardless of whether they are registered in China. However, well-known trademark protection in China can be challenging for foreign companies, particularly those with no prior business in China. To establish a trademark as well-known in China, a company must provide evidence of its use and recognition among Chinese consumers, which can be a lengthy and expensive process.

Igor Demcak
Igor Demcak

Trademark Attorney

Founder & CEO of Trama

7 year experience in IP protection

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