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Trademark Prosecution in China: Timing, Filing Strategy, Appropriate Translations, and Registering Several Versions

Key Considerations When Seeking Brand Protection

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Tuesday, July 19, 2022

Recorded event now available

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This CLE course will provide guidance to counsel for companies with products in China to ensure IP protection through trademark registration. The panel will examine the considerations and procedures involved with securing trademark protection in China, such as actions against infringers.

Description

The China National Intellectual Property Administration (CNIPA) has received a record-high number of trademark applications in recent years. However, the number of trademarks approved for registration has declined. Counsel advising clients who do business in China need a strong understanding of Chinese trademark laws and procedures in order to protect their client's assets. Do OEMs really need to register their marks in China? How do Chinese speakers view Latin alphabet marks? Should you advise your client to create a Chinese character equivalent of the mark, and if so how should you go about this?

The panel will discuss what clearance is advisable, the advantages and disadvantages of national applications versus Madrid applications, the identification of goods and services, and the importance of sub-classes in China. We will cover defensive filing, how do opposition and cancellation proceedings work, the rules of evidence, and when to appeal a Trademarks Office decision to the courts. The panel will touch on the conduct of litigation in China and the efficiency of using Chinese courts.

The panel will also discuss post-registration strategies, how can trademark holders work with customs in China, and whether there are alternative forms of protection that businesses should consider.

Listen as our authoritative panel examines the considerations and procedures involved with securing trademark protection in China. The panel will provide guidance on addressing trademark issues in China.

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Outline

  1. Recent developments in Chinese trademark law
  2. The status of the OEM exception
  3. Navigating the application process
  4. Oppositions and cancelations
  5. Post-filing considerations
  6. Beyond trademarks

Benefits

The panel will review these and other key issues:

  • What issues must be addressed for trademark registration in China?
  • What steps can U.S. companies implement to protect their brands against infringement?
  • What timing considerations should counsel keep in mind when determining when to file a trademark registration?

Faculty

Chen, Yixian
Yixian Chen

Barrister & Solicitor
Jones & Co.

​Yixian Chen’s practice is focused on the protection and enforcement of intellectual property in China, including...  |  Read More

Jones, Paul
Paul D. Jones

Principal
Jones & Co.

Mr. Jones advises on national and multi-jurisdictional trade-mark and domain name applications and disputes. He...  |  Read More

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