While registering a trademark, in addition to complying with laws and regulations such as the Trademark Law of the People's Republic of China, there are several "unwritten rules" that are crucial to understand. Although these rules are not explicitly stated in legal texts, they play a significant role in the actual registration process. Here are the 7 key "unwritten rules" to be aware of before registering a trademark:
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Distinctiveness is Essential
A trademark must be distinctive, meaning it should enable consumers to differentiate the source of goods or services. If a trademark is overly simple, generic, or highly descriptive—such as using "Apple" for fruit products—it may be rejected due to lack of distinctiveness. Additionally, a trademark cannot consist solely of the generic name, graphic, or model of the goods, nor can it directly indicate the quality, main ingredients, function, purpose, weight, quantity, or other characteristics of the goods.
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Prior Use Matters
According to Article 59, Paragraph 3 of the Trademark Law, if another party has already used a trademark that is identical or similar to the registered trademark and has gained a certain level of influence on the same or similar goods before the registrant's application, the registrant cannot prohibit that party from continuing to use the trademark within the original scope of use. This means that even if you apply for a trademark, if someone else has already used an identical or similar trademark with a certain influence before your application, you may not be able to prevent their continued use.
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Similarity Search is a Must
Before submitting a trademark registration application, it is essential to conduct a similarity search to ensure that your trademark does not resemble any other trademarks that have already been registered or are in the process of being applied for. If trademarks are too similar to the point where they cannot be distinguished, they will fail to differentiate the source of goods or services, rendering the trademark ineffective. Therefore, the similarity search before application is of vital importance.
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Avoid Malicious Registration
Never engage in the malicious registration of trademarks that are well-known to others. Malicious registration will lead to objections from the rightful owners, preventing the trademark from being approved. Even if it is somehow approved, it may still face invalidation proceedings and adverse legal consequences.
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Choose the Right Goods and Services Categories
In China, various goods and services are categorized into 45 major classes, and each trademark must be registered in a specific class of goods and services. Applicants should select the appropriate categories based on their business scope. If necessary, for core trademarks, multiple-class registration and other protective measures should be considered.
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Keep Evidence of Use
During the trademark registration process, even if the trademark has not yet been registered, it is important to keep evidence of its use, such as sales invoices and advertising materials. These pieces of evidence may play a crucial role in addressing trademark objections or infringement disputes, proving that your use of the trademark was prior or has a certain level of influence.
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Engage a Professional Agency
It is advisable to engage a professional agency that is officially registered and filed for trademark registration. Professional agencies can help avoid errors caused by unfamiliarity with the process or the law, thereby increasing the success rate of trademark registration.