Chinese Trademarks – April/18 Update

Chinese law also allows (if not implicitly encourages) trademark applicants to file in multiple classes, covering a range of goods and services far beyond what the applicant actually provides. We often cite Starbucks as a prime example of a company that has taken full advantage of this strategy by (for example) registering “STARBUCKS” as a trademark in all 45 classes of goods and services. See China Trademarks: Register in More Classes, Take Down More Counterfeit Goods.

Another question is whether companies with a logo that contains some text should file separate applications for both the logo and the text itself. The short answer is yes: filing separate applications for both the logo and the word mark provides more protection than just the logo by itself. You can use the word mark with all fonts and in all contexts, and you won’t need to file a new word mark application if you change your logo (which happens all the time). And although a logo that includes text is typically considered more distinctive than a word mark by itself – and therefore more likely to be registered – the CTMO examiners are unpredictable enough that even this isn’t always true. I was reminded of this recently when we received different decisions on two almost-identical trademarks. One was a word mark; it was approved without incident. The other was a slightly stylized version of the word mark; it was rejected due to a perceived conflict with a preexisting mark. It makes zero sense that the CTMO issued these two decisions, but consistency has never been that agency’s strong suit.

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