General

"International trademarks are a solid foundation for enterprises to expand their overseas business, which helps enterprises to build international brands and enhance market competitiveness. However, the overseas trademark protection system is complicated, and enterprises usually encounter registration and protection problems when going overseas, and they need to pay attention to Identify the relevant risks." Xue Youfei, a professional international trademark manager and senior international trademark agent of Chaofan Intellectual Property, said at the seminar on common issues of overseas trademark protection for enterprises held recently.

Xue Youfei said that in terms of trademark registration, there are usually the following three ways. One is simple letters or acronyms of the English name of the enterprise, which are easily rejected due to lack of distinctiveness and similarity to the prior trademark. If an enterprise wants to register a relevant trademark, it is recommended to use more than three letters, combine vowels and consonants to create a trademark that is easy to spell and read, thereby enhancing the identification; or apply for a graphic design or adding a combination of graphics. The second is a pure Chinese trademark. This kind of trademark is likely to be regarded as an icon and cannot be registered as a trademark, and some countries will require explanations in Chinese. For enterprises to register such trademarks, it is recommended to use English, pinyin, and graphics to apply for a combination, clarify the purpose of registration, and try to reflect the characteristics of the product or Chinese characteristics. The third is the Chinese Pinyin trademark. Due to the different pronunciation habits in my country and overseas, it is difficult to promote it. It is recommended that enterprises understand the pronunciation rules in English and apply for the trademark after improvement. In addition, companies cannot ignore local cultural taboos when registering overseas trademarks. In the past, trademarks have been rejected because images of women partially violated Sharia law. In terms of commodity selection, enterprises should avoid applying for too many commodity items, resulting in many additional fees. We should focus on meeting business needs, try our best to choose products that meet international standards, and reasonably control the quantity of goods.

In terms of renewal, the validity period of trademarks in each country is different. Enterprises must calculate the registration and renewal time to save costs. Xue Youfei said that the validity period of registered trademarks in East Timor and Maldives is only 3 years, 7 years in Bangladesh and Nepal, 10 years in the Philippines and the United States, 14 years in the Bahamas, and 15 years in Lebanon and Venezuela.

In addition, enterprises must also take the initiative to monitor and early warning, and actively exercise their rights when they find squatting trademarks. "In most European countries, during the examination process of trademark registration applications, the examination authority only examines the absolute reasons for rejection of the application ex officio, and does not cite the same or similar prior trademarks to issue rejections, leaving the relative reasons to be resolved in the opposition procedure. Therefore, Enterprises need to take the initiative to carry out trademark monitoring work, find out the squatting trademark in time, and take measures to stop it, otherwise the squatting trademark will directly pass the examination.” Xue Youfei said that in some countries and regions, “after a certain statutory period, the trademark cannot be invalidated. Declaration” or similar legal provisions, such as the European Union. According to the EU Trademark Law, a registered trademark can be invalidated on the grounds of violating the prohibition clause, malicious squatting, prior rights and other reasons. However, if the earlier right holder knows that the later EU trademark has been used for more than 5 years, the EU trademark will not be declared invalid, unless the later applied EU trademark is filed in bad faith. Therefore, enterprises going overseas should use international intellectual property rules to solve problems, and should not be slack in exercising relevant rights.