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China Trademark Classes and Strategies

As we have written many times over the years, if you are selling goods into China, sourcing goods from China, or even just doing business in China or with China, you probably should be registering a trademark in China for your brand names and your logos.

China is a first-to-file country and it does not require evidence of prior use, which means that whomever files for “your” trademark first almost certainly gets it. For more on the need to register your trademarks in China, check out China Trademarks: Register Yours BEFORE You Do ANYTHING Else.

But for what exactly should you register your trademark in China?

China breaks out its trademark registrations into 45 different classes, not to mention sub-classes. And unlike many other countries, China is a “single class application” country, which means you must file (and pay for) a separate trademark application for each class for which you are seeking trademark protection. Very roughly speaking, this means that if you register your “ABC Trademark” in the class for clothing, you will be protected from trademark infringement just from those who use your ABC Trademark on clothing items. If someone wants to use your ABC trademark on clocks, cars, kitchen appliances, or any other product or service within any of the other 44 classes, they will be free to do so.

So then what can you do? Well obviously you can register your “ABC Trademark” in all 45 classes, but that is really not a solution because doing that would be prohibitively expensive for all but the largest and wealthiest companies. It is also no solution because if you fail to use your registered trademark for three years, you risk losing it.

So then what should you do when filing for China trademarks? We suggest you register your mark in classes of products you may make or sell in the future, or where there is room for consumer confusion. Let’s take your ABC Trademark on clothing. It probably does not make sense for you to register that for kitchen appliances, but it might make sense for you to register it for beauty products because so many clothing companies also make beauty products.

Unfortunately, there are no general rules here, beyond that you fully familiarize yourself with China’s various trademark classes and that you figure out as early as possible what classes your products/services best fit into now or may fit into in the future and also what registrations by others are most likely to be confused for yours.

I have an intellectual property lawyer friend who believes just about every consumer related company (and many tech and industrial companies as well) should always apply for a China trademark in the class for clothing in addition to the trademark class of their core products. She holds this view because so many brand names appear on T-shirts, socks, or something in one way or another and most companies will at some point want to put their trademark on a piece of clothing — be it a T-shirt for a promotional item or for a marketing blitz or whatever. Or, the company will eventually want to expand their brand by moving into clothing, as was the case with Harley Davidson, Caterpillar and Ferrari.

I see her point but I think that in the end every company should make its China trademark decisions based on a cost-benefit analysis that incorporates their own special situation.

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