Is a trademark strategy necessary when developing business in China?

The author has previously discussed the importance of a trademark strategy on several occasions. Some rights holders will ask, our business is not very big at the moment, is it really necessary to formulate a trademark strategy like a Fortune 500 corporation? It is true that not all rights holders require a trademark strategy, especially for those whose business are not very large and who do not intend to continue expanding. However, for any business operator that wishes to develop business in China, build brand influence and aim for a leading industry position in future, a trademark strategy is indispensable.

Some people have a hard time understanding the importance of a trademark strategy, mainly due to two reasons: (1) unfamiliarity with China’s trademark registration system and the extent of trademark infringement in the market; and (2) a lack of a full appraisal of the adverse consequences that could arise in future as a result of trademark piracy or infringement. If an enterprise lacks a tailored trademark strategy, it may encounter numerous difficulties in protecting its brands in China, and will have difficulties in mounting an effective response when it faces infringement or other conflict of rights.

Negligence of protection in associated trademark classes. There is not a one-to-one correspondence between the classes of goods/services in the Classification of Similar Goods and Services and goods/services in reality. Sometimes one good or service needs to be registered in different appropriate classes. For example, a mobile app may need, at minimum, to be registered in Class 9 (which includes downloadable mobile application software) and Class 42 (which includes computer programming and related services); if other classes of goods or services are involved, registration in the corresponding classes is also necessary.

Frank Liu is a partner at Jincheng Tongda & Neal