Trademark Prosecution in China: Key Considerations When Seeking Brand Protection

Timing, Filing Strategy, Appropriate Translations, and Registering Several Versions

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


Conducted on Tuesday, February 6, 2018

Recorded event now available

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Program Materials

This CLE webinar 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

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?

We will discuss what clearance is advisable, the advantages and disadvantages of national applications versus Madrid applications, identification of goods and services, and 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. Speaking of courts, we will touch on the conduct of litigation in China and the efficiency of using Chinese courts.

We will also discuss post-registration strategies, how can trademark holders work with customs in China, and are there 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

Emerson, Lauren
Lauren Emerson

Counsel
Leason Ellis

Ms. Emerson helps clients establish, protect, maintain, and enforce intellectual property rights. She develops and...  |  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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