In recent years, the pace of internationalization of Chinese enterprises has accelerated significantly, with more emphasis on R&D and innovation to build excellent brands. In this process, trademark risk is a topic that “going out” enterprises must pay attention to. In the online training activities on trademark risk prevention held by CCPIT Patent and Trademark Office and National Overseas Intellectual Property Dispute Response Guidance Center Pudong Branch recently, Wang Yifei, a trademark agent of CCPIT Patent and Trademark Office, explained to the enterprises how to prevent the trademark risk.

Wang Yifei said that before Chinese enterprises go overseas, they need to understand the trademark registration system and customs and taboos of the destination countries. For example, some Arab countries prohibit the registration of trademarks on alcoholic beverages, some countries do not accept pure Chinese trademarks, some countries prohibit the use of plants, animals and other patterns or names. If an enterprise applies for a trademark hastily before going overseas, it will not only be rejected, but also affect the progress of the enterprise's market expansion.

In addition, to prevent others from infringing, is also a trademark registration before the need to focus on the content. According to Wang Yifei, in reality, enterprises usually use and publicize their highly recognizable combination trademarks, and counterfeiters usually register trademarks that are similar to but distinguishable from the elements in the combination trademarks, and then confuse and misrecognize consumers through the combination use. At this time, if the combination trademark has been registered, it will be more favorable for enterprises to defend their rights. It is recommended that the enterprise through a third-party agency, timely search for registered similar trademarks, to assess the risk of registration and the risk of use. Combined with revocation, invalidation and other means, to clear potential obstacles in advance.

Trademark registration process, according to the demand, choose the right registration method. According to Wang Yifei, there are two common ways to register a trademark abroad, namely, overseas single country application and Madrid international registration application.

“Overseas single-country application refers to the application where the applicant submits the application documents directly to the trademark registration authority of each country for registration. Most countries take between one and two years to register. The advantage of this method is that the application can be filed according to the actual use of the trademark in the target country, which is highly targeted. The disadvantage of this method is that it needs to be entrusted to an agent in the local country, and the cost may be higher in certain countries.” Wang Yifei said.

Madrid international registration application refers to the trademark registration among the member countries of the Madrid Union in accordance with the provisions of the Madrid Agreement Concerning the International Registration of Marks or the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Wang Yifei said that this way is cheaper, but relatively longer, and needs to go through a triple review by China's State Intellectual Property Office, the International Bureau of the World Intellectual Property Organization, and the local country's national bureau.

“There is also instability in the effectiveness of the Madrid registration, as the international registration requires a domestic application/registration as the basis, and can only be delinked from the registration of the country of origin after five years, so once the registration of the country of origin is revoked within five years or the domestic application is rejected and fails to be registered, the international registration will be revoked with it.” Wang Yifei introduced.

Trademark registration does not mean you can rest on your laurels. Wang Yifei said that enterprises also need to establish a global early warning mechanism to monitor the infringement clues, if the local counterfeiting, similar trademarks, it is recommended to file an opposition application within the period of the other trademark's initial announcement, or to file a declaration of invalidity within five years from the date of the announcement of the registration, so as to fully protect their own rights and interests in trademarks.