As the fashion world becomes more international, the realities of operating a business can be difficult. It’s no longer enough to think locally or even nationally. Technological advances in the internet age mean emerging designers can sell to customers across the globe from an early date. But with that advantage comes responsibility to protect your brand and protect it across the globe.
As anyone who has previously attempted to register their trademark in China will attest to, the process and seemingly conflicting rules and bureaucracy can be more than a slight headache. Thankfully, after months of anticipation, the China Trademark Office (CTMO) introduced its new trademark laws last Thursday, 01 May.
So, what’s changed and how will it affect fashion business owners hoping to register their trademarks in China? Well, the Third Revision of the Trademark Law institutes a number of changes including shorter registration times, increased damages for trademark infringement and a new good faith requirement. Below are the top six changes we think will have the biggest significance for all you fashion business owners!
1) Applications can now be filed in electronic form meaning a lot less paperwork!
2) The CTMO will now be able to seek an amendment, or clarify the content of, a new application by dealing directly with the applicant rather than issuing a formal Notice of Refusal. This will help make the overall application time shorter and less bureaucratic for applicants!
3) Indeed, there will also be a quicker turnaround time for trademark applications – it will now only take between nine and twelve months (it previously took two years and sometimes longer).
4) Applications for registration and use must be made in good faith. Although we don’t have a definition of how, exactly, good faith will be interpreted, the requirement will hopefully help clamp down on trademark squatters. As many designers expand into China, they are discovering that their names have already been registered as trademarks by individuals hoping to extort money from them. The cost of registering a trademark in China costs in the region of £2000 but many designers are paying between £100,000 and £150,000 to buy their name from squatters. We recently reported on basketball player Michael Jordan’s legal battle in China over the use of his name to sell basketball shoes and jerseys. The clothing sports Jordan’s jersey number, 23, and the name ‘Qiaodan’ which is a Mandarin translation of Jordan. The ‘good faith’ requirement will hopefully reduce this extortion. Bad faith will also be a ground to oppose an application and a trade mark agency will be unable to take instructions to file a new application if it knows (or should know) that the trade mark being applied for is being filed in bad faith.
5) Colour may be trademarked for the first time under Article 8 (whether Christian Louboutin’s red sole will be eligible remains to be seen.)
6) Increase in the level of damages the court may provide for trademark holders whose marks have been infringed (the limit is now between RMB 500,000 to RMB3 million (£50,000 – £250,000). That’s six times more than the previous maximum. It’s hoped that this increase will help deter counterfeiters -an area that’s a huge problem in China.
Make sure you protect your brand at the earliest possible stage by registering trademarks across all the jurisdictions. The Madrid Protocol allows your UK registered trademark to be registered in any of the countries that have joined the Madrid Protocol (91 countries, including China) by filing just one single application. Look out for our upcoming guidance on filing your fashion trademark across multiple jurisdictions!