UPDATE #6 - The importance of trademark registration, potential problems and pitfalls
Recently, one of the brands we are cooperating with, told us, rather shocked, that his trademark had been registered by another company in China already, and that the type font and graphics used were hardly different than his real logo. Very frustrated, he didn't know what to do. In response to this situation, other than expressing our sympathy and anger, we really could not do much else to help. This is also why we've always stressed the importance of registering trademarks promptly, and also why we're willing to patiently wait for the brands we work with to register their trademarks before officially entering the market, and this is one of the reasons why we're still waiting to go public. At the same time, under any circumstances, we have not ever made public any information about the hundreds of brands we are in cooperation with so far, even when some have publicly wondered on Facebook if we've actually signed cooperation agreements with hundreds of brands, even under these circumstances, we have not made public any name of any brand in order to help us clear up these doubts. We also hope that all of the brands that work with us, at this stage, will try as best as possible, not to disclose in public that they are now in partnership with us, so as not to cause unnecessary problems that may be encountered when applying for a trademark.
Apart from this, some of our partner brands have encountered major problems in the process of applying for trademarks. After a very long wait, the result was that the Trademark Office of the National Intellectual Property Administration of China rejected their trademark application in China, and the main reason being that there are similar trademarks already, or even the same trademark, already registered by other companies there.
This result not only costs the brand wasted application fees, but also has caused precious time to be lost. I must remind all the brands who are working with us that no matter what, please pay attention to the agency or lawyer that you select. In many cases, some European lawyers and agents partner with Chinese agents to carry out the business of helping clients register for trademarks in China, but because they are not familiar with the circumstances in China, many times the partners they select do not have the right expertise; some have just 2-3 people in a small office, without much experience, filing applications. They take fees, but they don't really get the job done, and they don't do the necessary due diligence that is required to make a thorough check on the availability of the desired trademark name, which leads to the problems mentioned above.
There are even some, who in fact deliberately, and irresponsibly, let the brand submit a trademark application they know will not succeed, because they can go through the opposition process on behalf of the brand, and earn the additional fees charged in the second application.
I have previously mentioned these issues to every brand in partnership with us after signing the contract, to please pay attention to this kind of potential behavior.
If you discover similar trademarks even before submission, then you can increase the possibility of passing the trademark review by adding one or two letters, or modifying some part of it, to increase your chances. First of all, as a smaller brand now, your brand is not really world famous yet, and therefore, making some minor modifications now, would not affect your brand’s value and will not cause your brand a lot of harm.
However, if you do not make these modifications, and then you do not pass the examination, you will not only lose money, you will have to repeat the application, and you still have to change it ultimately, at greater cost and time spent.
At the same time, to our knowledge, in case of rejection from the trademark office, please do not make the opposition lightly, because it is almost never approved. The only solution, sometimes, is to find a more professional trademark agent or lawyer, to do a thorough search and try again. Or, discuss with the other party who has registered the trademark, whether they would accept a bit more payment, in an acceptable range, and have that party pro-actively request a cancellation of their trademark with the trademark office, or have it transferred to you. If any of our partner brands are still not sure they can find a credible registration agent, we can introduce some other brands who have successfully applied for the trademark, and have them introduce their registration agents, because at least the capability and also professionalism of these agencies has been confirmed with real results. You can make a comparison and see which agent can best give you the most professional service, and at least have more options to choose from.
Best, Kate Chang