For many foreign companies, China trademark filing is considered only after a product is already being manufactured, packaged, shipped or prepared for online sale. By that stage, however, the brand may already have been disclosed to manufacturers, sourcing agents, packaging suppliers and other parties within the supply chain.

Mainland China generally follows a first-to-file trademark system. A trademark registered in the United States, European Union, United Kingdom or another jurisdiction does not automatically protect the same brand in Mainland China.

This does not mean that every company sourcing or manufacturing in China must file every trademark immediately. It does mean that trademark timing should be assessed before the brand becomes widely visible through supplier discussions, product samples, packaging work or commercial launch preparations.

In many cases, the practical question is not when the product will reach the market, but when the brand will first become visible during sourcing, manufacturing or packaging.

1. A brand may become visible before the product reaches the market

During sourcing and manufacturing, a foreign company may share its brand with:

· manufacturers;

· sourcing agents;

· packaging suppliers;

· product designers;

· logistics providers;

· distributors;

· online service providers; and

· other local business contacts.

The disclosure may include the English or Chinese brand name, logos, product names, packaging artwork, labels, samples, manuals and online listing materials—often long before the product reaches Amazon, retail shelves or other final markets.

This visibility may arise months before the product is offered for sale. The practical timing question is therefore not only when the product will launch. It is also when the brand will first be disclosed within the manufacturing and supply chain.

2. Foreign trademark registrations do not automatically protect the brand in Mainland China

A common misunderstanding is that a US, EU, UK or other foreign trademark registration is sufficient when products are manufactured in China. Trademark rights are territorial.

A trademark registered outside Mainland China does not normally create automatic trademark protection in Mainland China. Foreign applications and registrations may still be relevant to portfolio planning, priority review and consistency of ownership, but they do not replace a separate China trademark assessment.

This can matter even where the company does not sell directly to Chinese consumers.

A business may use China only as a sourcing, manufacturing, packaging or export base while still exposing its brand within the Chinese commercial environment.

3. First-to-file risks may arise before product launch

Because Mainland China generally follows a first-to-file system, the order in which applications are filed can be important.

If another party files the same or a similar mark for relevant goods or services before the foreign brand owner does, the later applicant may face additional difficulty, delay or cost.

In some circumstances, potential trademark squatting concerns may arise after a brand becomes visible through:

· supplier discussions;

· product samples;

· packaging artwork;

· trade fairs;

· distributor negotiations;

· online product listings; or

· other commercial communications.

This does not mean that every supplier, distributor or local contact presents a trademark risk.The more proportionate conclusion is that a company should understand its China filing position before extensive disclosure takes place, particularly where the brand is commercially important and the launch schedule is already progressing. 

4. Manufacturing timelines and trademark timelines are not always the same

Product development teams often work according to commercial milestones such as:

· finalising the brand;

· approving packaging;

· confirming a supplier;

· producing samples;

· beginning mass production;

· booking shipment;

· creating online listings; and

· launching the product.

Trademark filing is sometimes considered only near the end of this process.

However, a China trademark search and pre-filing assessment may need to begin earlier because several issues can affect the filing approach:

· the mark may already face earlier applications or registrations;

· the relevant goods may require a more detailed class and subclass review;

· the intended applicant may need to be confirmed;

· a Chinese brand name may need separate consideration;

· product materials may already have been disclosed; and

· an upcoming shipment or launch may reduce the time available for review.

Later filing does not necessarily mean that protection is unavailable. It may, however, make the assessment more complex and time-sensitive.

5. Amazon sellers and e-commerce brands may also need an early review

Some Amazon sellers and e-commerce brands assume that China trademark protection is unnecessary because their products are sold only in the United States, Europe or other overseas markets.

China may nevertheless be relevant where products are:

· sourced from Chinese suppliers;

· manufactured in China;

· labelled or packaged in China;

· assembled in China;

· exported from China; or

· shown to factories or sourcing agents before launch.

For product-based businesses, China trademark filing is therefore not only a question of where customers are located.

It may also be connected with where the brand is disclosed, where the product is manufactured and how early third parties within the supply chain become aware of the mark.

An Amazon seller or e-commerce brand does not automatically need an immediate filing in every case. However, the China trademark position should ideally be reviewed before production and launch arrangements move too far.

6. What should be reviewed before manufacturing or supplier disclosure?

Before manufacturing, sourcing or supplier discussions become advanced, a foreign company may consider reviewing the following information.

The mark

· the English brand name;

· the logo;

· any Chinese brand name or translation;

· product names; and

· alternative versions already in use or under development.

The goods or services

· the actual products to be manufactured or sold;

· related accessories;

· relevant online or retail services;

· future product categories; and

· whether several classes or subclasses may require consideration.

The intended applicant

· the operating company;

· a parent or holding company;

· a subsidiary;

· an individual; or

· another entity within the corporate group.

Existing rights

· US trademark applications or registrations;

· EU trademarks;

· UK trademarks;

· Madrid Protocol applications; and

· other relevant foreign rights.

China-related business activity

· sourcing;

· manufacturing;

· packaging;

· labelling;

· assembly;

· export;

· supplier negotiations; and

· distributor or platform-related activity.

Previous disclosure

· whether the brand has already been shown to a factory;

· whether packaging artwork has been shared;

· whether product samples have been produced;

· whether online listings have been prepared; and

· whether local business contacts have received brand materials.

Relevant timing

· product launch;

· sample production;

· mass production;

· packaging approval;

· shipment;

· trade fairs;

· platform requirements; and

· priority or procedural deadlines.

This information can support a more focused China trademark search, pre-filing assessment, class and subclass review and first-to-file risk assessment.

7. Early review does not always mean immediate filing

An early trademark review should not be understood as a recommendation that every company file immediately in every possible class.

The first step may be to confirm whether the mark is final, define the relevant goods or services, identify the intended applicant, review possible earlier conflicts and understand when supplier disclosure or production will occur.

Depending on the circumstances, the appropriate next step may be an initial China trademark search, clarification of the filing scope, review of a Chinese brand name or preparation of a trademark application.

The purpose of an early review is not to create unnecessary urgency. It is to identify which issues are time-sensitive before manufacturing, packaging or launch activities reduce the available options.

Practical point

A China trademark position is generally easier to assess before the brand becomes widely visible within the manufacturing and supply chain.

For foreign companies, Amazon sellers, e-commerce brands and startups sourcing or manufacturing in China, the relevant question is often not simply: When will the product be sold? A more useful question may be: When will the brand first be disclosed to manufacturers, suppliers, sourcing agents or other parties connected with China?

Reviewing the filing position before that stage may help identify first-to-file risks, potential trademark squatting concerns and practical next steps while the company still has time to adjust its filing and launch plans.

Related China IP considerations

Depending on the product and business model, companies preparing for manufacturing may also need to consider whether industrial design, utility model, invention patent, copyright or software copyright protection is relevant.

These issues should normally be assessed separately according to the product, technology and commercial plan.

Related practical guide

Companies preparing for an initial China trademark review should also consider what information to provide to the China IP firm handling the matter.

Chuanmo has prepared a separate practical intake guide covering the mark, goods or services, applicant information, foreign rights, China-related business status, supplier exposure and relevant deadlines.

Read the related guide:

What Foreign Companies Should Send Before Asking for China Trademark Filing Support

https://www.chuan-mo.com/NewsDetail/3632.html

How Chuanmo can assist

Chuanmo Intellectual Property Law Firm is a China-based IP firm providing practical Mainland China IP support for Chinese and international clients.

For foreign companies, overseas IP professionals, Amazon sellers, e-commerce brands and companies sourcing or manufacturing in China, Chuanmo assists with China trademark searches, pre-filing assessments, trademark filing, first-to-file risk reviews and the review of potential trademark squatting or supplier-related exposure before product launch, sourcing, manufacturing or market entry.