There is always a degree of uncertainty in trademark registration. Often, national trademark office databases do not include the most recently filed trademarks as they are only updated so often. As a result, the trademark in question may already exist as a file in progress. In addition, some countries such as the United States adopt the common law in trademark registration. There may be cases where a trademark is not registered, but already been in use. In these cases, the first party to use the trademark will have trademark rights. These reasons may lead to failure of the trademark application. However, we share the risk with our customers, and are the only company to offer a guaranteed, 50% refund service level.
Under normal circumstances, the trademark office will issue an acknowledgment of the trademark filing within a month. Our express service can guarantee protection of your mark by expediting the application to get a filing number within 3 business days. After that, the final trademark registration certificate will usually be issued in 8-24 months, depending on the country of registration and the complication of the case.
Witmart is the only company that offers a comprehensive search done by a professional trademark consultant free of charge.
Any individual or company can apply for trademarks in the US, Canada, or EU, regardless of their country of origin or operation.
TM is the short form for TRADEMARK, regardless of whether a trademark has been registered with any Intellectual Property office for registration; anyone can put TM to declare the trademark rights, but only registered owners can assert their rights in courts. Generally, in the upper right or lower right corner of the trademark.
® is the short form for REGISTERED, meaning it has been registered with an Intellectual Property Office. The owner of a registered trademark has the right to exclusive use of a mark which can be asserted in courts. You can identify a registered trademark on goods, packages, manuals, or other appendages. It is usually marked in the upper right or lower right corner of the trademark. It should be noted that the United States and some EU countries have strict limits on the use of ®; in some jurisdictions, it is a criminal offense to use the ® without a registration certificate.
a. Our professional team will exam the possibility of registering the trademark. As a result of this in-house review, we will recommend to you how you can modify your application if it needs to be changed at all.
b. We will ask you for any required documents and resources to present you with a filing plan.
c. Once you approve the filing plan, our specialist will submit the prepared document to the Trademark Office in the country of application.
d. Once Witmart receives the acknowledgement of filing; we will notify you immediately and send you the correspondence by email.
There are 3 kinds of trademarks that you can apply for: the word trademark, the figurative trademark, and figurative marks with letters.
A word mark is represented using words, letters, numbers or any other characters that can be typed. A figurative mark is represented using pictures, graphics or images.
A figurative mark containing letters is a specific combination of pictures, graphics or images with words or letters. Figurative trademarks are also sometimes called design trademarks.
For word marks, the font of the trademark can be changed when used;
For figurative marks, the image cannot be altered when used;
For figurative marks containing letters, the combination cannot be changed, otherwise it will not be protected by the Trademark Law.
In many countries such as the US and Canada, there are two scenarios when applying for a trademark: Either the trademark is already in use in the designated country; or it has never been used. The US and Canada Trademark Offices only issue the registration certificate after the trademark applicant had provided a Statement of Use. In the case that the trademark has not yet been used, the application may be filed with the bona fide intention to use the trademark to offer goods and/or services in the designated country. However, the statement of use will still need to be submitted before the registration certificate can be issued.
Currently the only way to register a trademark internationally is through the Madrid System (officially the Madrid System for the International Registration of Marks). This system facilitates the registration of trademarks in multiple jurisdictions around the world. The Madrid System currently includes the world's 92 major trading nations, and the operation of the entire system is managed by the World Intellectual Property Organization (WIPO). Although the Madrid System is convenient for centralized management of multiple trademark countries, it is very costly. After submitting an application to the WIPO, the customer needs to submit applications and fees to each country separately. Furthermore, should there be any problems with one country in your Madrid application, the entire application for all countries will fail, which can be costly. Finally, the applicant also needs to apply individually in each country before using the Madrid System to administer those applications centrally, so the risk is substantial and is not recommended for small to medium enterprises looking to expand. For small to medium enterprises, we strongly suggest applicants apply for trademarks in the US, EU and other major markets separately. This means you save time and money for trademark protection.
Generally, a trademark is submitted in black and white. The colors of the trademark can be changed freely after it is successfully registered. However, if the trademark is applied in certain colors other than black and white, the trademark must use the exact colors as approved. Therefore, we suggest that our customers apply for trademarks in black and white.
Usually, it is acceptable if the change of the font is insignificant (such as changes from italic to standard, Arial to Calibri). If the changes are significant, we suggest that customers reapply.
Our recommendation is to register the word and logo trademark separately. This creates flexibility on the usage of the trademark as well as reduces the overall risk of denial.
The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. It is updated every five years and its latest version (11th) of the system groups products into 45 classes (classes 1-34 include goods and classes 35-45 include services), and allows users seeking to trademark a good or service to choose from these classes. Since the system is recognized in numerous countries, this makes applying for trademarks internationally a more streamlined process
Our trademark consultants would be happy to help you choose the class that is most appropriate for your trademark. After selecting a common category, the system will automatically recommend appropriate international standard categories, so you can choose classification of goods and services in line with international standards.
Yes, as long as you can prove that you are the rightful trademark holder. If you have an existing Twitter account, you can submit all of your trademark registration information, along with your personal/company information to Twitter. Twitter will review the information and make a decision on the handler. If you don't have an existing Twitter account, you can still submit a trademark report. As a registered trademark holder, you can report possible violations to Twitter's Policy Team through support forms: https://support.twitter.com/forms/trademark For the full Twitter Trademark Policy, please see: https://support.twitter.com/articles/18367# Other social networks have similar trademark policy to protect trademark holders and their brands.
The period of validity of a registered trademark is ten years, counting from the date of registration approval. If you want to continue to use the registered trademark beyond this, an application for renewal of the registration must be made.
A trademark used in commerce before Federally registered. Common law begins when the trademark is used for the 1st time in commerce within a geographic area. The use of the trademark must be continual and deliberate.
Common law rights are limited only to the geographic area in which they are used and possibly to some areas of reasonable expansion. If you ever plan to conduct business outside of your geographic location (local jurisdiction) a Federal registration is required. Federal registration- that is trademarks registered with the USPTO- are given geographic protection across the entire USA. In addition, Federally registered trademarks are granted a higher degree of protection in Federal Courts than their common law counterparts.
USPTO stands for United States Patent and Trademark Office which is responsible for reviewing trademark applications for federal registration and determining if an applicant meets the registration requirements. To check a filed US trademark, go to USPTO website, and click Search trademark database. You will see several options to conduct a search. Depending on the type of marks you are interested, choose the appropriate search option. Once you arrive at the Trademark Electronic Search System page, type in your Search Term to conduct a search, and the system will show you results of the marks that contain the search term you entered. From there, you would know if a trademark you want is already registered or not.
The trademark application process is complex and lengthy. In the US, it usually takes 8 - 14 months from filing your application to registering your federal trademark; whereas in Canada, the same process takes even longer 10 - 18 months. Therefore, it is recommended to hire experienced professionals to file and monitor the process of your trademark application. Hiring a trademark lawyer/attorney is always an option, however, fees also tend to be higher. For example, a trademark lawyer charges around $1,500-$2000 for the general filing process, excluding the hourly cost for any potential dispute.Another option is to go through trademark service providers associated with experienced lawyers and attorneys which offers a similar service but at a much lower cost.
The United States Patent & Trademark Office has three options for filing applications through the Trademark Electronic Application System (TEAS) — TEAS Plus, TEAS Reduced Fee (TEAS RF) and TEAS Regular. The initial Application Fee for Electronic Filing is as follows:
Refer to the USPTO link below if you want see a more detailed breakdown.
Note: Almost all trademark fees for any part of the process are calculated on a "per class basis" for all listed goods and/or services, which will make overall fees higher if goods/services fall in more than one class. Also, fees presented here are based on electronic filing (paper filings are permitted, but have much higher fees).
In Canada, registration of a trademark consists of having the trademark entered on the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada ("CIPO"). The entire process takes approximately twelve (12) to eighteen (18) months, unless there are opposition proceedings, in which case the process can be much longer.
In Canada your registration is valid for 15 years. In the USA your registration is valid for 10 years.
In the right circumstances, you can register a trademark with a city name in it. You can apply for a trademark with a city name in it If the city’s name is used as part of the brand name for your company’s products or services, However, just because you are able to obtain a registered trademark for that city’s name, you do not own the city’s name, nor do you own the city. Trademarking that city’s name will prevent other companies from using the city’s name in association with a product or service similar to yours. If you wish to trademark a city name, you should contact a trademark professional to conduct a search of current trademarks. It is possible that someone already owns the trademark for your desired city name as it is very common for local businesses to include these city names in their promotional slogans or business names.
In the US, it usually takes 10 - 14 months from filing your application to registering your federal trademark; whereas in Canada, the same process takes roughly 12 - 18 months. The process depends on how quick the correspondent responds to any substantial/non-substantial office action from the local trademark office.
In theory, anyone could register a trademark as long as he/she supplies the necessary information to file the trademark. In Canada, you will need to provide your name, business name, address, a representation of your trademark such as a drawing and other required information in order to begin the process. Nevertheless, filing a trademark is not equivalent to a trademark registration. There is no guarantee that your application will go through successfully.
Trademarks are symbols, words, logos, sounds or shapes that differentiate your goods or services from its competitors. A logo can be trademarked when you are ready to do so. Once you registered your trademark, you are entitled to protect your logo from imitators, and persuade legal actions if your right is violated.
Yes. In the US and Canada, you may use the “™” designation to alert the public that you consider yourself the owner of the mark. It is not mandatory to have filed an application with the United States Patent and Trademark Office (USPTO) or the Canadian Intellectual Property Office (CIPO). The symbol "™" may be used whether you intend to register the mark or not.
In Canada, the whole process from start to finish, from filing your application to getting your trademark registered, usually takes about 18 months on average.
A brand name is a company's identity and valuable asset which carries the ability to influence consumer purchase decisions. Lots of resources and investments are made to build up brand names. By trademarking your brand name has the following benefits:
1. Protecting the brand name, logo nationwide with an exclusive right to use the mark.
2. Deterring other parties from infringing your mark, depreciating the value of the goodwill invested in the brand.
3. Providing the owner with greater remedies, giving him or her an automatic right to sue in federal court and recover from the damage caused by an infringement.
In order to successfully trademark a name, your mark needs to be either inherently distinctive or has acquired distinctiveness overtime through the owner’s usage. A mark that is descriptive in the beginning could acquire secondary meaning in the process. For example, if the public later associates your trademark that was originally descriptive with a particular source, manufacturer or producer, then it has acquired distinctiveness and can be submitted to the Trademark Office. Refer to our blog article below on how to pick a good name to trademark.
You can find out if a word, slogan or logo is trademarked as well as its current status in Canada by searching in the Canadian Trademarks Database on the CIPO website.
You will need the following information to file a trademark application:
For most non-resident filers the same process is used for all trademark applications in the US, but there are different ways to file. If you have already filed for a trademark in your own country please see our blog article on foreign filings to see if you can take advantage of the priority filing. However, to file as a non-resident you will need to be represented by US Attorney or a qualified non-US attorney recognized by the USPTO.
There are several steps to limit the infringement of your trademark on the Internet:
You should display your trademark symbol at least once, in a prominent area of your site. If it is a logo that is in the header or prominently displayed on a page, the trademark notice should definitely be used. You don't want it to be distracting if you have a lot of text. You don’t need to have it displayed after every instance of your product every time it appears on your website.
You should also include a mention of the trademark in the footer of your web-page as follows:
"ABC trademark(s) is a/are federally registered trademark(s) owned by ABC Company. Any unauthorized use is expressly prohibited."
The strongest marks tend to be fanciful or arbitrary. Invented words, like Zynga, and words with no association with the protected goods, such as Apple, are stronger than marks that are merely suggestive or descriptive.
Foreign filing considerations are largely business decisions. The most important target jurisdictions are those that are or will be commercially significant for ones company. In choosing where to file, consider:
Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. That secondary meaning must be one that identifies the phrase with a particular good or service.
A registered trademark or service mark uses the circle-R symbol to indicate that it has been approved and officially registered whereas TM is used to signify the mark's common-law rights and/or to demonstrate that the applications were submitted but not yet approved.
No, trademarks or service marks are jurisdictional, meaning that a registration in Canada will not protect your mark in a foreign county such as US. The mark is only protected within the country in which you register your trademark under.
Copyright protection does not extend to titles, names, slogans or short phrases. You can not copyright your name, the title of your post or any short phrase that you use to identify a work. The reason is that copyright is designed to protect works of creative authorship, it is not designed to protect how that work is identified in the marketplace, the same goes for people and places.
The first step to conducting a trademark search in Canada is to look up your proposed trademark name in the Canadian Trademarks Database, which is available online or in-person at the Canadian Intellectual Property Office. The database gets updated weekly and is the most reliable source of information on which trademarks have been registered in Canada.
To successfully trademark a logo, you should first confirm if similar logo trademarks are already registered by someone else. One way to know is to do a clearance search on the USPTO website. If you are not able to find a confusingly-similar mark after a thorough search, then you'll have a good chance to register your logo.
The government fees for a trademark registration in Canada are $250 when the application is submitted; and $200 at the end of the application process after the Notice of Allowance is issued.
An important principle to remember when choosing a trademark is its distinctiveness as it serves as a brand-identifier that will help an average consumer distinguish your brand from another. Read our blog to learn more about what's considered a good trademark, click here.
Currently the basic government fees for a trademark registration in Canada is a flat rate of $450 in total: $250 when the trademark application is filed, and $200 at the end of the application process upon registration of the trademark. However, Canadian trademark laws are changing and are anticipated to go into affect in 2019. These changes will bring the following potential new fees:
Yes and no. A registered trade name receives some of the protections as a registered trademark, but the protection is much weaker. With a registered trade name you are basically only protected against bad-faith use of your mark by others. If someone else files an application to register your trade name as their trademark before you do, you have to oppose the application within a specific time frame.
Tradition, mostly. The use of upper or lower case in registration does not generally make much of a difference, except that sometimes Camel Casing can be used to change how the mark is perceived. For example, IndiGo is not quite the same as indigo, Indigo, or INDIGO. However, this is quite uncommon in practice.
While it is possible to file a trademark application without a lawyer/attorney, it is generally advisable to retain some kind of professional assistance to help you with clearing the mark, composing and filing the application (especially the list of goods and services), corresponding with the trademark office after filing if your application must be changed to make it registrable, and representing you in any opposition or other proceedings that may arise. Witmart does not practice law, but it can help you with the clearing and application stages.
In the U.S. one should be warned that the USPTO is unlikely to register surnames or an individual's name or likeliness for trademark protection unless certain conditions are met. One must prove that the name has a "secondary meaning" by being part of a unique brand that is used in marketing and commerce and is widely recognized. In some cases, a name can be trademarked when it is one of a kind, but it requires substantial evidence to prove this.
In Canada currently, famous names are only registrable as trademarks if the applicant can establish by way of evidence that the applied-for name has “acquired distinctiveness” or “is not without distinctive character” in Canada and so long as the other statutory requirements are met. In general, the evidence needed by such applicants decreases as the level of fame of the individual increases. Unfortunately, recent amendments to Canada’s Trade-marks Act will make it even more difficult to secure registration for a famous name used as a trademark in Canada.
Fair Use of Copyrighted Material
What is "fair use"?
Fair use is the right to use a copyrighted work under certain conditions without permission of the copyright owner. This principle helps prevent a rigid application of copyright law that would stifle the very creativity the law is designed to promote. It allows one to use and build upon prior works in a manner that does not unfairly deprive prior copyright owners of the right to control and benefit from their works. Together with other features of copyright law, fair use reconciles the copyright statute with the First Amendment and freedom of expression/speech rights.
Copyright protects the expression, in a fixed form, of a business idea and not the idea itself. Thus, neither the Copyright Act nor common law will help protect your business idea based on copyright. If you want protection, you must fix it in a tangible form (for example, a photograph, a video, a piece of writing, a sound recording, a computer program).
The China Trademark Office uses the Nice Classification as a way to categorize its goods and services; but instead of counting items on the pick list under each class, the Chinese Trademark System organizes them into individual groups under each class. Pick list items with similar characteristics are grouped together and each group has its own unique code in the Chinese Trademarks Database. For example, Printing Service belongs to Group  in Class 40 and is assigned a numeric code 400111. This method of categorization allows applicant to cross search other groups that usually carry similar pick list items and makes it easy to identify items that might cause potential conflicts with the application. Consequently, grouping helps you to properly count the pick list items under Goods and Services; and it is a good idea to draw down relevant groups, items before you apply.
As a blogger, you put countless hours of your time into creating original content for your viewers. Having it stolen can be frustrating and upsetting. Here are 4 things to help you protect your blog content:
2. Register your Copyright - Registering your blog posts with the Copyright Office of your jurisdiction gives you legal grounds to bring a lawsuit for copyright infringement. If you’re familiar with copyright basics, you know that copyright protection is automatic and your posts are your property the minute you publish each post on your blog. However, to have legal standing to bring a lawsuit, you must register that post with the U.S. (or other) government.
3. Send a Cease & Desist Letter - This formal letter is like a warning letter to the party that is using your copyright material. Also, the letter should outline and reference the posts taken with links and usually a window of time to comply with your letter.
4. Use the Digital Millennium Copyright Act- This law is comprehensive but, the main provision that protects content is the Notice and Take-down rule. If your content is stolen then you can use this rule of Take-Down and let the platform or web host know via a take-down notice and the content should be removed.
For a variety of reasons web addresses (also known as a domain names or URLs) aren't protected by Copyright. Even though Copyright doesn't protect domain names they are protected by Trademark law. There are a couple of ways you can check if a domain name is Trademarked:
1. Online TM Searches - USPTO trademark database and CIPO Trademark database; and
2. Companies that search for you like Witmart and other Intellectual property service companies.
No. Once you have filed a trademark you cannot fundamentally change the application. There are a lot of things that you can change in your trademark application, but the trademark itself is not one of them. The only exception is when you have a really minor typo or something really insignificant, for example, a missing period in the end of the slogan. But the general rule is, after you file your trademark, you can't alter the trademark itself.
Trademarks are jurisdictional meaning a trademark is only protected within the country in which you register it in. Although the Madrid International Trademark System makes the registration of trademarks in multiple jurisdictions around the world possible, it is not an ideal method of application because of its associated risk. Therefore, to protect your trademark from infringement, it is recommended to register it in every country you are interested in obtaining a registration from.
There are many elements which go into a trademark application. The core components are applicant individual/business information, type of mark, basis of use and goods and services, application fee and specimens in some jurisdictions. Although preparing an application itself is not difficult, accurate evaluation of a mark and appropriate response to an Office Action are keys to a successful registration. For an overview of a US trademark application process, please click here.
Since trademark registration is jurisdictional, it is in the applicant's best interest to search the country's trademark database before applying. For example, you can go to the Trademark Electronic Search System for US trademarks, and the Canadian Trademarks Database for Canada trademarks. If you are interested in trademarks in other parts of the world, TMview would be your best friend in conducting a global trademark search.
Yes, you can trademark a YouTube channel. You can trademark the name, logo, or slogan that you are using to promote your YouTube channel. As a YouTube channel is considered to be an entertainment service, it can be subject to the standard protections under trademark law.
Canada adopts Nice Classification which is an internationally-used system of classifying goods and services for trademark applications. More about Nice Classification can be found in a previously-posted FAQ: What is Nice Classification? What are the classes in the Nice Classification?
Yes, you can register a trademark as an individual. In fact, anyone can apply for a trademark as long as he or she owns the mark. A person can claim ownership when he or she is the one who controls the nature and quality of the goods or services under the trademark.
A USPTO examining attorney sends an Office action to notify an applicant about issues with his or her application. This type of action will include the reason why registration is being refused or what requirements must be satisfied. In most cases, the applicant must respond to an Office action within 6 months from the date the Office action is issued or the USPTO will abandon the application, the application fee will not be refunded, and your mark will not register. There are two types of Office actions: non-final and final actions. A non-final Office action raises an issue for the first time. A final Office action issues when the applicant's response to the prior Office action fails to address or overcome all issues. An applicant's response to a final Office action generally is either compliance with the requirements or an appeal to the Trademark Trial and Appeal Board.
To avoid trademark violations, you need to find out if the trademark you want is available. By searching the USPTO database, you can tell if the proposed mark is already registered or is pending for registration. Sometimes, even when a mark does not have another identical mark in the USPTO database, it can still infringe another trademark if two marks are confusingly similar to each other. Therefore, it is always recommended to conduct a comprehensive trademark clearance search to identify any potential risk for your trademark before submitting the application.
How to find out if a slogan is trademarked?
In order to find out if a slogan is trademark, you can conduct a search in the trademarks database of specific jurisdictions that interest you. It helps you to identify any trademarks that have already been registered or applied for that is either similar to your trademark, or used on related products or services. In Canada, you do that by searching in the Canadian Trademarks Database whereas in the US, you go to the Trademark Electronic Search System (TESS) to look for any conflicting marks before you apply.
Whether you should register a trademark for your business name depends on the geographic scope of your business, the type of name you have and whether you have the time and money to file a trademark application.
Copyright protection does not extend to titles, names, slogans or short phrases, the Copyright Office has made that much very clear. . The five things that cannot be copyrighted are Titles and Names, Ideas, works by most Governments, works without Authorship/Facts and Fashion.
A brand logo can be a trademark, but a trademark is not necessarily a brand logo. A brand logo is a visual representation of a brand's message and positioning. It evokes emotion from the consumer. Your brand has value and a brand logo is an important part of your brand image that sets your business apart. On the other hand, a trademark is any word, symbol, sound or a combination of all that distinguishes the source of the products/services; and this gives you an exclusive right to use your brand logo.Since a brand is a valuable asset in business, protecting it by registering a trademark prevents competitors from infringing your mark and causing confusion in the market.
To help avoid potential difficulties to your trademark application being registered you should do the following:
A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. Patents may be granted for inventions in any field of technology. An invention can be a product – such as a chemical compound, or a process, like producing a specific chemical compound. Many products in fact contain a number of inventions. A great example is a laptop computer that involves hundreds of inventions that work together.
The best way to avoid infringement of a Trademark on YouTube is to not use that trademark unless you have express permission to use that trademark from the Registrant.
Trademark Infringement on YouTube
Generally, titles of works that are part of an ongoing series are protected under most trademark laws, an example would be the Twilight series or Hunger Games trilogy. However unlike series titles, titles of a single work, whether a book, periodical, song, movie, or television program, normally, will NOT be protected under trademark law. To quote the USPTO, “Regardless of the actual relation of the title to the book,” courts treat all single title works as "inherently descriptive" at best and "inherently generic" at worst – unless the single title has had “wide promotion and great success.”
Your Canadian trademark application will undergo several phases at the Canadian Intellectual Property Office (CIPO) including; Advertising, Examination, Formalities, Opposition, and Allowance/Registration.
Formalities: After your trademark application is filed with CIPO it will be assigned a filing date and application number, provided that the application is complete. CIPO will also add your application to the Canadian Trademarks Database and issue you a formal filing acknowledgement and a proof sheet that summarizes the information in your application.
Examination: Examiners will review your compliance with all application requirements. Your mark will be inspected based on its clarity, descriptiveness, distinctiveness, deceptiveness, potential conflicts with earlier applications and any other criteria that may apply. If there are any issues with your application, the examiner will issue an Examiner’s Report. You will have a chance to respond to the examiner, and if the objections raised in the report are not overcome, your trademark application will be rejected.
Advertising: If the examiner's objections are overcome, or there are no objections, your trademark application will be approved for advertisement in the Trademarks Journal, a weekly publication by CIPO that lists trademark applications seeking registration. Publishing your application in the Trademarks Journal allows members of the public an opportunity to oppose your proposed trademark during what is called the "Opposition Period.”
Opposition: During the Opposition Period third-parties may oppose your trademark application based on breach of copy, propriety rights, descriptive mark, bad faith, etc. This Opposition Period lasts for two months from the date of advertisement.
Allowance/Registration: If your trademark application is not opposed, CIPO will issue a Notice of Allowance, inviting you to pay the Registration Fee. It is not required in Canada to provide proof of use; however, if the application is Proposed Use, you have to submit a Declaration of Use. Once the Registration Fee and Declaration of Use (if applicable) have been submitted and accepted by CIPO, your trademark will be registered. CIPO will then issue an official Certificate of Registration.
In Canada, the use of the Nice classification system is currently voluntary. Keep in mind, however, that categorizing goods and services according to the Nice Classification will become mandatory next year when the legislative changes to the Trademarks Act come into force on June 17, 2019.
Other than researching online and comparing similar logos on the internet, one can search on the USPTO's Trademark Electronic Search System using the Design Search Code Manual to determine if a logo has been trademarked. Even after searching on the USPTO database and the results appear reassuring, there is no guarantee that your logo can be registered as the USPTO examiners do their own searches to ensure there is no other conflicting marks that could cause confusions in the market. In additions, trademark companies such as Witmart offer Comprehensive Search Packages that cover searches for both word and logo trademarks.
A trademark clearance search is also known as a due diligence search; it is a systematic search for registered and unregistered trademarks including pending, common law, abandoned and expired trademarks. A clearance search is important because it helps to identify any potential obstacles to successfully register your trademark. The common hurdles for a trademark registration include existing same or similar marks, similar marks used for same or similar goods and services, same or similar marks in other jurisdictions you wish to apply for and merely descriptive marks.
Trademark research begins with identifying the obviously conflicting trademarks in the USPTO or CIPO records which can be accessed through the Trademark Electronic Search System (TESS) or the Canadian Trademarks Database. Similarity of the marks in sound, appearance, or meaning as well as the commercial relationship between the goods and services identified by the marks play a significant role in determining the success or failure of your trademark application. For example, the mark T.MARKEY and TEE MARQEE are phonetic equivalents of each other. Spelling the word differently does not substantially distinguish the two marks because consumers could still believe the products and/or services sold under these two marks come from the same company. Because of that, the examiner will likely refuse registration of your mark on the ground of likelihood of confusion. Hence, in order to conduct a proper trademark research, it is necessary to search the trademark databases thoroughly for any phonetically similar words, synonyms, homonyms, and/or foreign words with similar meanings.
A business name essentially designates the name under which a business is operated, for example, ABC Corp, a company, which was formed by the merger of 123 Corp and DEF Corp. Though the parent companies have different names, the company established after the merger is registered under the name ACME Corp. A business name may or may not be trademarked but needs to be registered depending on the jurisdiction you are in.
A Trademark identifies the source of products or services. It can be a word, phrase, design, or symbol (or a combination of any of them) that distinguishes a business from its competitors. When you own a Trademark, you have exclusive rights to the mark, which prevents anyone else from using it in any jurisdiction you are registered. Provided you comply with the requirement to renew your Trademark, your Trademark will have an unlimited lifespan.
Maybe! For most registered Trademarks they are only protected in the jurisdiction that they are registered in. However, in some cases a U.S. registered trademark could be enforced in other countries. A recent famous case that was decided dealt with this issue of enforcement in other jurisdictions - Trader Joe’s v. Michael Norman Hallatt. In this case Michael Norman Hallatt purchased Trader Joe’s-branded goods in Washington State, transported them to Canada, and resold them there in a store he designed to mimic a Trader Joe’s store called Pirate Joe's. Trader Joe’s sued under U.S. Trademark law and after a lengthy appeal, won based on the merits of the case. So, yes you can enforce a U.S. trademark in Canada, but it depends on the facts of the case.
No there is no International Trademark you can buy, but you can use the Madrid International Trademark System to register your Trademark worldwide. The Madrid System is a convenient and cost-effective solution for registering and managing Trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 117 countries. You can modify, renew or expand your global Trademark portfolio through one centralized system.
Who can use the Madrid System?
You can use the Madrid System if you have a personal or business connection to one of the System’s members. This means you must either: be a resident, have an industrial or commercial establishment in, or be a citizen of one of the 117 countries covered by the Madrid System's 101 members.
How much does it cost?
The cost of an international Trademark registration includes the basic fee, plus additional costs depending on where you want to protect your mark, and how many classes of goods and services will be covered by your registration. After obtaining an International Trademark registration, additional fees apply to expand the geographical scope of coverage, modify or renew your Trademark portfolio. Here is a list of fees for each country under the Madrid System.
Yes, as long as the person is using that brand or company name. A trademark can be any one or a combination of words, sounds or designs used to identify goods or services of one person or organization from those of others.In order to obtain and maintain a registration for a trademark, the trademark must be "used" in commerce. If you are not using your brand or company in the normal course of trade, you will lose your right to claim trademark use.
If you have not made up your mind on which brand name or logo to use for your business, you should not file a trademark application. Although certain information on an application such as address and phone number can be changed after filing, a trademark name amendment is considered a material alteration on the application. Therefore, once you submit your trademark application, it is final.
You are not required to be a U.S. citizen to apply for and obtain a U.S. Trademark registration. You have 3 options to file a U.S. Trademark applications:
2. If you have filed for Trademark or have a registered Trademark in a foreign jurisdiction you can file in the U.S. based on these foreign filings or foreign registrations; and
3. Utilize the Madrid System - The Madrid System is a one-stop solution for registering and managing Trademarks worldwide. Under the Madrid Agreement, Trademark applicants can submit one application to protect their work within a coalition of countries. The Madrid Union is made up of countries that recognize these international Trademarks.
When filing a trademark application in Canada, a “Filing Basis” must be selected. You can select from three possible options:
1. “Use in Commerce” basis: If you are currently using your trademark in Canada, we can file your application on a “Use in Commerce” basis. In this case, you will need to provide the date of first use in Canadian commerce for each of the products and/or services included in the application. The date of first use must be before the filing date.
2. “Proposed Use” basis: If you are not using your trademark in Canada, we can still file your application on a “Proposed Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 12 months after the filing date), you must provide the date of first use in commerce in Canada for each of the products and/or services included in the application, when paying the registration fees.
3. “Foreign Registration” basis: If your trademark has been filed or registered in your country of origin, we can file your application in Canada on the basis of the “Foreign Registration” if the following conditions apply:
Trademark registration in Canada usually involves the following steps:
You may register anything that does not disobey the Trademarks Act such as words, devices, names, three-dimensional shapes, sounds, slogans, motion, and holograms. You cannot, however, register the following types of marks:
The trademark registration process usually takes 14 months. When a trademark application is submitted, it takes roughly 3 months for the Chinese Trademarks Database to update. Afterwards, the trademark office reviews the completeness and validity of the submitted documents and issues an acknowledgment of the trademark filing within 2-3 months of application submission.
Consumers' purchasing decisions are often influenced by brand names. As your business reputation grows, your brand will be more valuable as it has the power to direct consumers to the rightful source of products. Hence, applying a trademark becomes an inevitable step to protect the business from imitators and helps consumers to identify the product.
In this scenario, you have the common law trademark rights which are acquired through actual use of the trademark in association with the goods and services. The owner of a common law trademark can assert rights against other confusingly-similar marks in a specific geographic region where the owner has built up goodwill. However, unlike a registered trademark, a common law trademark has a limited protection and can not be enforced federally throughout the US. Therefore, it is in your best interest to register your trademark to gain full protection nationally.
The entire Canadian trademark application process, from filing to registration, generally takes 12 to 18 months if there are no objections from a CIPO examiner or third-party oppositions to the application.
We find it can take anywhere from 10 to 12 months before an application is reviewed by an examiner at the Canadian Intellectual Property Office.
Registering your trademark with the Registrar protects your rights in Canada only. If you wish to sell goods or services in other countries, you should think about getting trademark registration(s) there as well. For more information, contact a Witmart Trademark Consultant.
You cannot register a trademark in individual provinces in Canada. All trademark registrations are granted nationally by the Canadian Intellectual Property Office (CIPO). Registration of a trademark in Canada gives you nation-wide protection of your mark no matter where you live in Canada.
Companies, individuals, partners, trade unions or lawful associations can apply for the registration of a trademark in Canada provided that they comply with the requirements of the Trademarks Act and Trademark Regulations.
Yes, if the home country of the applicant is a World Trade Organization member and/or a Paris Convention member, that applicant can file under their home filing date to earn priority consideration.
Yes, if you do not use your Canadian trademark after registration, your business competitors can attack your trademark on the basis of non-use. Non-use is valid grounds for cancellation.
Yes, it is legal to use an unregistered trademark for goods and services. You can use the ™ mark for any non-registered trademark. That said, you are not able to use the ® mark until you have officially registered your mark in Canada.
Registering your trademark in Canada proves validity and ownership, making it harder for your competitors to challenge your mark. That said, under the “First to Use” jurisdiction, registration is not required to obtain rights to a trademark as long as you can prove that you are the first to use the mark.
To satisfy the use requirement in Canada, you must prove that the trademark was used within three years after registration by confirming through a Declaration of Use. Minimal use is acceptable, and usage must be proven within Canada.
If you plan to always use a combination of word(s) and design together in association with your goods and services, you can file one application showing the trademark as the combination of word(s) and design in black and white.
If you plan to use the word(s) separately from the design, however, you may wish to file two separate trademark applications — one for the word(s) and one for the design.
The Canadian Intellectual Property Office (CIPO) is a part of Innovation, Science and Economic Development Canada. CIPO is a Special Operating Agency and is responsible for the administration and processing of the greater part of intellectual property (IP) in Canada. CIPO's areas of activity include trademarks, patents, copyright, industrial designs and integrated circuit topographies.
You can access the national office by clicking this link: Canadian Intellectual Property Office
When you register your trademark, you get the sole right to use the mark across Canada for 15 years. Under the amended Trademarks Act, however, new marks filed for registration after June 19, 2019, will be protected for ten years. You can renew your trademark every ten years after that.
Technically, a registered trademark is one that has been entered in the Register of Trademarks, as managed by the Registrar. Registration is direct evidence that you own the trademark. In Canada, should a trademark dispute occur, the registered owner does not have to prove they own the trademark — that duty falls to the challenger.
Trademark registration is not required for ownership. By using a trademark for a certain length of time, you can come to own it according to common law. If you use an unregistered trademark and end up in a dispute, however, you could be looking at a long, expensive legal battle over who has the right to use said mark. Even if you do register your trademark, if you fail to use the mark over a long period of time, you may be taken off the Register of Trademarks, making it more difficult to prove legal trademark ownership.
China is a first-to-file country - this means whoever files first for a trademark owns it. If you are interested in doing business in China, filing your trademark early is strongly recommended. Not only would it protect your brand, it would also give you credibility when it comes to operating business in the country.
Since both US and China are part of the Paris Convention, if someone files a trademark application in a Paris Convention country and then files a second application in another convention country within 6 months of the date of the original filing, she can claim the first filing date as the date for her subsequent applications. For example, Amy filed a trademark application in the US on March 1, 2018. In her case, she would have until September 1, 2018 to file a trademark application for the same goods and services in China claiming the early filing date of March 1, 2018.
Between the 5th and 6th year of registration, you must file a Section 8 declaration. A Section 8 declaration is a signed statement filed by the Trademark owner. The fees for these types of renewals are as follows:
Between the 9th and 10th year after registration, you must file a combined declaration of use and/or excusable nonuse and application for renewal under Sections 8 and 9 (combined filing). A Section 9 renewal application is a written request to keep your registration active. The fees for these types of filings are as follows:
A combined Section 8 declaration and Section 9 application for renewal must be filed every ten years calculated from the date of registration. Failure to file required maintenance documents will result in the registration being cancelled or expired. The deadline to file maintenance documents is established by law and cannot be waived or extended. If your registration is cancelled, your only recourse is to file a new application with a new application filing fee.
Trademark squatting is a nightmare for brand owners and global business entities today. It is also increasing in many countries around the world. Generally, Trademark squatting is an act of registering other people’s marks as their own by squatters in other countries in order to gain benefits from original marks or real Trademark owners. Many brand owners or business entities have recently confronted this problem while there is no particular resolution.
A trademark is a form of property. You can sell, bequeath or transfer your rights to someone else through an assignment. To avoid ownership disagreements, you should formally tell the CIPO Registrar about changes in ownership.
Yes, if you apply to register a trademark in Canada but are living outside the country, you must appoint someone (a “representative for service”) in Canada to whom the Registrar can send correspondence.
Your representative for service cannot act on your behalf for any business with our office — only your trademark agent can do that. Your representative for service’s only role is to receive correspondence from our office.
It is best to file your application as soon as you affiliate your brand or identity with your unique “Trademark”— the word, logo, phrase or other unique element or combination thereof that you wish to register. As you begin the registration process, you might discover that someone is already using a similar or identical mark. It’s better to find out about potential conflicts early rather than several years after establishing your brand identity around a mark already in use elsewhere.
You or anyone else can look through the Trademarks Journal, a public document published by the government of Canada, to monitor new registration applications. If a potential trademark from another applicant raises concern, you should hire a Trademark Agent or Lawyer and file a formal Statement of Opposition that includes all the grounds for opposing a potential applicant.
You may sell, bequeath or otherwise transfer your rights to a Trademark through a process called assignment. You may also license rights to your Trademark. Trademark Assignment is an act by which the rights in respect of a Trademark are conveyed from one person or organization to another.
Anyone who claims rights in a mark may use the TM (Trademark) or SM (Service mark) designation to alert the public to their claim of ownership, regardless of whether they have filed an application with the Canadian Intellectual Property Office (CIPO). This claim may not be valid, but merely shows evidence that the owner believes that the mark is protectable. Use of the federal registration symbol (®) can only be used when the mark has been registered officially with CIPO. It is improper to use the ® at any time before CIPO grants registration.
Copyright applies to all original literary, dramatic, musical and artistic works provided the conditions set out in the Copyright Act have been met. Each of these general categories covers a wide range of creations, including:
Copyright also applies to other subject-matter consisting of:
A trademark cannot be registered in Canada if it is nothing more than a name or surname (for example, John Doe or Jane Smith, Wong, Cohen, etc.).
There are exceptions to this rule. For example, if you can prove that your goods or services have become publicly well known under a particular name or surname and that the word has developed a second meaning associated with your brand in the public mind, you may still be able to register your mark. Another exception might include a name or surname that has a separate meaning outside the name or surname itself; that is, the name is also the word or name of a community, city, town, river, castle, etc. In that case, you could register your last name to as a business trademark — as long as there were no other reasons you prohibiting that usage.
Any person with a reasonable argument for doing so can oppose a trademark application advertised in the Trademarks Journal. The person must make the opposition within two months of the publication date by either filing a statement of opposition or asking for more time to oppose. The proper fee must be sent with the statement of opposition or request for more time. The Registrar will not allow any opposition that may be considered frivolous.
If your application is opposed and you do not already have an agent, it is best to hire one at this point. The same is true if you wish to oppose someone else's application. Opposition is a complex and often long process. Opposition proceedings are adversarial in nature and similar to court proceedings. Both parties may file evidence and counter-arguments, cross-examine the evidence of the other party, and appear at an oral hearing. After a final decision is made, it may be appealed to the Federal Court of Canada.
The Quebec Charter of the French Language contains provisions that are intended to protect the French language within Quebec. The regulations under the Charter provide a specific exemption for “a recognized Trademark" within the meaning of the Trademarks Act unless a French version has been registered. “Thus, a Trademark registered with CIPO is exempt from the Charter. It is not clear whether an unregistered trademark would also be covered. Your safest course of action is to register the trademark if you intend to use it in English in Quebec.
A trademark is used on goods when it appears on their packaging, labelling or on the goods themselves. A trademark which appears only in advertisements for the goods or on the goods during an isolated sale or a free distribution of the goods is not considered "used" for this purpose. A trademark is used on services when it appears in advertisements or promotional material for the services, and the services are available at that time.
The best way to avoid conflicts with trademarks filed earlier than yours is to have a trademark search done. An experienced trademark professional like the experts at Witmart can offer preliminary advice before the search is conducted — protecting you from potential risks before they turn into conflicts.
The United States Patent and Trademark Office (USPTO) is the agency of the Department of Commerce in charge of prosecuting and granting Patents and registering Trademarks in the U.S. The USPTO advises the President, Secretary of Commerce and various government agencies on ways to protect, enforce, and promote intellectual property policy in the U.S. and abroad.
The website of the USPTO is www.uspto.gov
A petition to cancel a registered Trademark is possible if these violations are present:
The opposition period starts on the date the application is published online in the Official Gazette and will end 30 days after that date. However, extensions are possible to be granted to the opposing parties if they file the correct document to the Trademark Trial and Appeal Board.
An opposition is a proceeding in which one party is seeking to prevent registration of another party's Trademark. Under the law, if a party believes that they will be damaged by the registration of a Trademark, they can file an opposition.
You can file an appeal to the Trademark Trial and Appeal Board. You must file the appeal within six months of the mailing date of the final refusal from the USPTO Examining Attorney to register.
A cancellation is a proceeding in which a party seeks to cancel an existing registration of a Trademark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel.
A petition to cancel a registered Trademark is possible if these violations are present:
The trademark holder. Although registration may be blocked by the IP office applied to, it is the responsibility of the trademark holder to watch advertising journals for any marks they wish to oppose.
Witmart offers free trademark searches.
There is one federal registry as well as one registry per state. Puerto Rico also has it's own trademark registry.
The applicant may receive an office action outlining a likelihood of confusion and have to either amend, respond to the office action with arguments or abandon the application.
Federal registration is required to protect a trademark in an American territory in most instances. However, Puerto Rico does have its own registry that an applicant can take advantage of.
No, you may not. Due to federal drug laws refusal may be based on a lack of intent to lawfully use the trademark in commerce.
No, the lawyer must also be a registered trademark agent.
A registered trademark agent is the only professional permitted to handle an application whether searching, preparing, filing, or responding to issues raised by the Canadian Intellectual Property Office.
No. A trademark registration can only be granted to a limited number of goods and services associated with the trademark.
No. An applicant can file on an intend to use basis.
No. This would lead to a likelihood of confusion between your mark and the registered mark.
No. Typically, those descriptions will be needed by others in your filed to describe their own goods or services and thus can not be trademarked.
Typically a response must be received by the USPTO within 6 months.
The examining attorney assigned to the file will assess the response to your office action and advise the applicant if it has been accepted.
No. Oppositions are held by the Trademark Trial and Appeal Board.
It is always possible for an applicant to file a TEAS RF application which allows for custom descriptions.
No. All applications are processed according to when they are filed.
Yes. Proof of your goods and services for a US application must be either submitted with the initial application or after the notice of allowance has been granted. A statement of use will have to be provided for each class.
Disputes over domain names are handled by the dispute resolution service providers as accredited by the China Internet Network Information Centre.
Trademark searches are not required before filing an application, but they are highly advisable to reduce the risk of application rejection. An applicant may hire a trademark agent or agency to do trademark searches or conduct the search themselves. The specific procedures and fees are subject to the agent or agency. There are no fees for a self-conducted search.
If you do not conduct a thorough trademark search before applying for a China trademark registration, the application may suffer rejection due to the existence of identical or similar marks that were registered or filed before. A search makes you aware of those trademarks so that you can adjust your mark to avoid confusion before filing.
Your search results can be hundreds of pages long (there are millions of trademarks filed in China every year) and determining whether a conflict exists between your and another party’s trademark requires a multi-factor analysis that isn't always straightforward. It is vital to have an experienced trademark agent carefully examine your search results and advise you on the likelihood of acceptance for your trademark application, so as to steer you clear of infringement lawsuits.
For English marks which have Chinese meaning, you must also search for the Chinese meaning of the mark. This is an essential part of the official examination. In most cases, if the Chinese meaning is similar to or registered as a trademark by another company, your English mark will be refused by the China Trademark Office.
The trademark search types in China include searches for: Chinese Characters, Chinese Pinyins, English letters, numbers, acronyms and graphics that could be used in a trademark.
When your trademark is an English word that has a corresponding meaning in Chinese, you must search for the Chinese character that represents that word.
Chinese consumers prefer to purchase the Chinese versions of the brand, because Chinese is their first language. If you don’t already have a Chinese name for your trademark, you are strongly advised to create one and register it. If not, the Chinese markets will create one for you—without your consent—and a third party might register that Chinese nickname for your product as you have not.
Yes, but the search is usually limited to whether there are any prior identical or similar trademarks applied to the same or similar goods or services.
The Trademark Office is mandated to complete the examination of a trademark application within nine months of the date of filing. However, this process can actually last from anywhere between 9 and 12 months on average due to backlog and any complications.
All foreign individuals and foreign and domestic legal entities or businesses can register a trademark in China. Domestic individuals cannot register a trademark in China.
Any combination of letters, words, sounds, designs and shapes that identify your goods and services from those of others can be registered.
On average, the registration process can take anywhere from 12 to 24 months.
The validity period of a registered trademark is 10 years, commencing from the date of registration.
To renew a trademark registration, all formalities and forms must be completed within 12 months of the trademark’s expiration date. The validity period of each renewal is 10 years commencing from the day following the expiration of the previous 10 year validity period.
A registrant that fails to renew the trademark before the expiration date may be granted a six-month grace period before having their mark cancelled if they do not take action within that time.
The official fee for one trademark application for a single class, for no more than 10 items (goods or services) in that class, is RMB300 (about 48USD). There is an extra charge of RMB30 per each additional item.
China uses a first-to-file system for trademark registration. This means that you do not have to prove that you are using the trademark in order to get registered. Therefore there are no common-law trademarks in China and you need to file for a trademark in order to receive protection for your services or goods.
Yes, a PRC agent is required to file a trademark for an individual who is foreign to China.
Goods and services are classified using the Nice Classification system. However, China uses its own set of Chinese sub-classifications. These sub-classifications can be considered completely independent from each other so it’s important to register your trademark in all relevant classes.
Yes, electronic application is available for trademark filing.
Yes, thanks to the Madrid Protocol, you can file a trademark internationally through the WIPO (without using a PRC agent). This process takes much more time and is more prone to pitfalls and obstacles.
Any correspondence with the trademark office will come in the form of a written letter on paper, whether the application was filed electronically or not.
Yes. Similar to the US and Canada, each having their own Goods and Services Manual, China has their own Chinese Identification Manual that must be used when classifying and specifying goods and services.
First of all, you can only claim priority rights if you already have a trademark in another country or jurisdiction that is recognized by China. You can claim priority rights if: it’s in accordance with any agreement between China and a foreign country; if it’s in accordance with an international treaty in which both countries have a part; or if it’s on the basis of mutual recognition of your right to priority filing based on various factors.
To file for priority rights, you must register the same trademark that you have registered in the first country according to the same goods or services in China within six months of the original trademark’s application date.
Yes. Under the Regulation of Implementation of the Trademark Law, on receipt of a notice of supplement or correction from the trademark office, any applicant, whether federal or domestic has the opportunity to amend their application.
You have 30 days to make the supplement or correction. If you do not respond to the objection, the Trademark Office will reject your application and notify you of the rejection in writing. Once the application has been rejected, there are no legal procedures available for you to adjust the application.
The publication phase lasts for 3 months, and in that time third parties can file to oppose your trademark if they find issue between your mark and theirs.
During the publication phase of an application, if a third party finds issue with a published trademark, they can oppose the mark and submit evidence to have the mark cancelled.
You can appeal to the Trademark Review and Adjudication Board (TRAB) and then to the People’s Court of China, if the decision made is still unsatisfactory
After receiving a decision of rejection from the Trademark Office, you have 15 days to apply to the TRAB for a review. The board will make a decision within nine months of receiving the application and notify you in writing.
The time limit may be extended by three months under special circumstances. You may also institute an action against a decision of the TRAB in the People’s Court of China within 30 days of receiving it.
The Trademark Office is mandated to complete the examination of a trademark within nine months of the date of filing. Your mark is then published in the Trademark Gazette, provided your application complies with the relevant legal provisions. If nobody files an opposition against the published application within 3 months of the publication date, the trademark will be registered, a certificate of registration will be issued, and the registration will be published.
On expiry of the publication period, it normally takes 12 months for the Trademark Office to make a decision to approve or deny the opposed registration and notify the complainant and applicant of its decision in writing.
Yes, under special circumstances the time limit may be extended to 6 months.
Yes. Both parties can pursue an appeal of the decision.
The applicant has 15 days to apply to the TRAB Board for a review after receiving the decision.
If the TRAB gives you an unsatisfactory ruling, you may institute an action in a people’s court within 30 days of receiving the decision. The people’s court will notify the opponent to participate in the action as a third party.
According to trademark law, for a registered trademark to be assigned to another party, both parties must sign an agreement and jointly file an application with the Trademark Office
Yes, it must be recorded.
Yes. According to trademark law, when the use of a registered trademark has ceased for 3 consecutive years without good reason, any entity or individual can apply to the Trademark Office for cancellation of the registered trademark.
Typically, the Trademark Office will make a decision within nine months of receiving the application (under special circumstances, the time limit may be extended by three months).
Trademark squatters are individuals or companies who file for a trademark that is in use by another company in bad faith.
Regular searches through trademark Gazettes can uncover any trademarks attempting to earn registration that may pose a threat to your brand.
Regularly searching through sites such as Alibaba and Baidu can help you discover any damaging activity to your brand. Some firms also offer trademark watch services and will alert you of any suspicious activity.
Private investigators can be hired to discover and collect evidence on companies selling counterfeits of your brand which can be turned in to the State Administration of Industry and Commerce (SAIC) as evidence towards a complaint or file a claim with the People’s Court.
By registering your goods with the General Administration of Customs (GAC) you can be made aware of any counterfeit goods that pass through Chinese borders and take swift action.
To register with the GAC, an applicant must include their name, personal information, contact information, the information and a representation of the goods, a list of priority products covered by the trademark for heightened protection and a photo to identify those product(s).
A GAC registration lasts for 10 years.
The GAC will monitor imports and exports and alert you if any goods that are identical or similar to yours reach the borders.
One trademark registration with the Chinese customs covers up to 30 items.
Registrants should not just look out for identical or similar names but also be aware of their Chinese translations and identical or similar goods or services.
For the best level of protection, a trademark should be monitored every month, aligning with the publication of weekly Gazettes from the Trademark Office.
The Trademark Office of the State Administration of Industry and Commerce (SAIC) is responsible for the registration and administration of trademarks in China.
This depends on the administrative level that the complainant is applying to. The SAIC at county level will directly accept and examine complaints of trademark infringement and take action via a raid of the infringing party. The SAIC at municipal level is responsible for infringements of greater value. They will stop and impose fines on the offending party.
Complainants have the option of taking administrative action against infringers with the SAIC or to take civil or criminal action with the People's Court of China.
You need to obtain evidence and information that the infringing party has indeed infringed your trademark. It is advisable to keep a notary of the process of obtaining infringing goods.
No, there is no minimum threshold of value in order to file a complaint with the SAIC.
You must include: a certificate of incorporation (for a business) or a copy of a valid passport or ID (for an individual). You must provide a copy of your trademark registration to prove that you are the rightful owner of the trademark and, if an attorney is involved, a signed Power of Attorney is required.
All the aforementioned required documents of a domestic applicant must be included but should be notarized and legalized with a Chinese translation.
Given that the case is straightforward, and all the necessary documentation has been provided, the SAIC will take approximately 1 to 3 months to investigate and resolve the case.
The SAIC (State Administration for Industry and Commerce) handles non-standard use of registered trademarks, unfair competition (anti-counterfeiting, infringement of trade secrets, commercial disparagement, etc.), violation of advertisement law and unlicensed business activities.
Given that there are no special circumstances, it takes approximately 6-12 months to resolve a civil action and approximately 3-6 months to resolve a criminal action.
A successful action may result in the complainant being awarded with injunctions on the infringing party and compensation for damages. An account of profits may also be awarded.
The statute of limitations is two years, starting from when the trademark registrant or interested party discovered or should have discovered the infringement.
Filing for a criminal trademark infringement action is reserved only for the most serious of offences or high profile cases.
Yes, there is a minimum threshold of value of damages that must be incurred from the infringement before you can file a civil action against the opposing party. Small claims will try cases involving monetary claims of RMB 15,000 (US$ 2,500) or less.
Examples of valid evidence of use include any evidence that gives the time and date of use of the product or service as well as any indicator that it is being used in Mainland China along with any other relevant information.
Yes, the owner of a well-known, unregistered mark may request legal prosecution when another party uses or applies to register a trademark which is a reproduction, imitation or translation of the mark only in respect to identical or similar goods or services.
Chinese courts traditionally favor paper evidence over anything else. However, electronic evidence is becoming increasingly used in Chinese intellectual property litigation.
Electronic evidence that arises organically during the normal course of business is better than those formed for the purpose of litigation.
*Unless the offending party disputes the presented evidence, the evidence can be admitted directly. Otherwise, the court will ask the complainant to provide further evidence to support their claim.
Examples of electronic evidence include: emails, digital photos, webpages, blog entries, and BBS records.
The reliability of electronic evidence is determined by five factors: the formation process, the storage process, the collection process, the transmission process and the completeness of the electronic evidence.
No, trademarks can also be protected under copyright and design patent rights, in line with the relevant laws and regulations.
Online, trademarks are mainly governed by the Trademark Office and the Trademark Review and Adjudication Board.