General

"International trademarks are a solid foundation for enterprises to broaden their overseas business, and help international trade enterprises to build international brands and enhance their market competitiveness. However, the overseas trademark protection system is complex, and enterprises often encounter problems of registration and protection when going to sea, so they need to pay attention to identifying relevant risks." Xue Youfei, the professional manager and senior international trademark agent of Chaofan Intellectual Property, said at the recent seminar on common problems of enterprises' overseas trademark protection.

Xue Youfei introduced that there are usually three ways to register trademarks.

First, simple letters or initials of enterprise English names, which are easily rejected due to lack of distinctiveness and similarity with the previous trademarks. If an enterprise wants to register a relevant trademark, it is recommended to use more than three letters and combine the vowels and consonants to create a trademark that is easy to spell, so as to enhance the recognition; Or conduct graphic design and add graphic combination application.

Second, it is a pure Chinese trademark. This trademark is likely to be regarded as an icon and cannot be registered as a trademark. Some countries will also require explanations in Chinese. For enterprises to register such trademarks, it is recommended to apply in combination with English, Pinyin and graphics to clarify the purpose of registration and try to reflect the characteristics of products or Chinese characteristics.

The third is the Chinese Pinyin trademark. Due to the different pronunciation habits between China and overseas countries, it is difficult to promote. It is recommended that international trade enterprises understand the English pronunciation rules and apply for the trademark after improvement. In addition, enterprises should not ignore local cultural taboos when registering overseas trademarks. Some trademarks have been rejected because of the violation of Islamic sharia law by female images. In terms of commodity selection, enterprises should avoid applying for too many commodity items, resulting in many additional costs. We should focus on meeting business needs, try our best to select products that meet international standards, and reasonably control the number of goods.

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

In addition, international trade enterprises must take the initiative to monitor and warn, and actively exercise their rights in case of rush to register trademarks. "During the examination of trademark registration applications in most European countries, the examination authorities only examine the absolute reasons for rejecting the application ex officio, and will not actively cite the same or similar earlier trademarks for rejection, leaving the relative reasons to the objection procedure. Therefore, international trade enterprises need to take the initiative to carry out trademark monitoring, timely find the rush registered trademarks, and take preventive measures, otherwise the rush registered trademarks will directly pass the examination." Xue Youfei said that some countries and regions have provisions that "after a certain legal period is exceeded, the trademark cannot be declared invalid" or similar legal provisions, such as the European Union. According to the EU Trademark Law, the registered trademark can be declared invalid on the basis of violation of the prohibition clause, malicious rush registration, prior rights and other reasons. However, if the prior obligee knows that the post EU trademark has been used for more than 5 years, the EU trademark will not be declared invalid, unless the post EU trademark is applied for by malicious preemption. Therefore, enterprises should use international intellectual property rules to solve problems when going to sea, and should not neglect to exercise relevant rights.