Way Insight 海外业务负责人
Q：Hello, I'm delighted to be here with JJ from Way Insight UK and they are a Chinese firm, they advices clients on intellectual property and have an office based in the UK as well. And delighted to have you here JJ.
A：Thank you for the opportunity, Rob.
Q：I've been really interested to hear about brand protection in China, I guess first will give us a very quick instruction. Who are you? And what do you do?
A：Yeah, sure. Hi, everyone. This is JJ from Way Insight UK. I came to UK for my Master in 2011. I've worked in UK, Germany, Japan in the past 10 years. And I joined the IP industry as a business development manager. And then I started our own company in the UK for this IP firm.We are founded by a group of IP attorneys in China, and we focus on cross border clients, meaning bringing the Chinese clients’ IP abroad. And I also help international clients including business, corporates and IP firms and help them to secure their IP in China. So that's what we do.
Q：Great. That was really pretty succinct. And I suppose that the obvious question is, why is it important? Why the clients need to be thinking about brand protection in China? If they are potentially a small business, in the UK or Europe, what are they needing to be thinking about?
A：Yeah, so over, obviously, there are the “cliche reasons” like China is the second largest economy, and we just have a lot of activities with large firms as well as small firms. So at the same time, we serve a lot of small to medium size startups as well as IP firms. I will use a few examples to explain why.
For example, a very small company. They actually manufacture their goods in China. As they were exporting, they had Customs issues because clearly someone else is using this trademark in China. Now we enter a dispute of whether it's okay to import it? Is it counterfeits, etc. That's one clear example. And also like if you are lucky enough and your business is expanding to China, you will find that in China, a lot of trademarks are registered already for good reasons, or we also know there're “bad-faith” registration and to override that is a very difficult process.
So we always encourage the clients or the clients’ attorneys to think about brand protection, because to be honest to compare with, you know, EU, the trademark, application fees with the Chinese one, the cost is very different. We think that in China, it's definitely a country you can think early, budget permits, to protect your brand in China beforehand and that will save you a lot of trouble and hassle and documents processing afterwards in China.
Q：As it's not a lot less expensive, is it in China?
A：Yeah. For example, in China, I think one class one Mark , the official fee will be $45. For EU, it's 850 euro. That's quite different, a (big) gap, I think.
Q：Okay. And when should clients be thinking about this? If they have got or if they're registering in, say they're registering in UK and EU or in the states as well, When and at what point does it make sense to include China into that mix? Or is if you do it at all at the same time? And what would you recommend?
A：It's definitely possible to do it at all times. Or there's something called Paris convention, which allows you if you are registering in the UK it gives you 6 months to enter China. And then you can keep your UK registration date, which is actually what we call priority date. If we're talking to IP attorneys we’ll certainly encourage them to think about the IP portfolio internationally, especially in the countries where you are certainly going to have either footprint or future markets like consumers.
So that's what we do. And with the startup, I know that like both of us we consider our budgets, then we will say ok you do need to have a priority, but if you can keep a certain pace of doing everything within 6 months, if you are sure that this is going to be your logo and this is the trademark you're trading under. Then we encourage you to do in that half-year period. That would be my advice.
Q：Okay. that's very clear. And how difficult is it to register? It is not very expensive. Is it tricky? If there is already someone in China with similar Mark or similar name? What's the process like?
A：It's actually quite straightforward. So for some countries, if you are doing a legal process like this, you need legalization, notarization. But the Chinese trademark office actually simplified the process. So at the moment, what we need the client to decide is really the trademark, your logo, your design, because it's going to be difficult to change in the future.
And then think about the goods and services you're going to trade under this trademark, and you can expand to future plans as well. So try to get everything in one go. And that's what basically what the clients need to do. And then it's a few documents like proof of your identity or incorporation certificate and a power of attorney. So for us, it's quite upfront， it is a simple process. Then it takes about, I think, on average, 9 to 12 months to get the actual certificate, given that no one submits any objections to your trademark based on different grounds, like either mostly similarity, based on prior marks.
然后可以斟酌一下，这个商标下有哪些商品和服务；可以把考虑扩展到企业未来计划中。要试着一口气把所有东西搞定。这部分基本上就是客户需要做的。然后需要一些文件，例如身份证明或公司注册证书、委托书。对我们来说还是挺直截了当的，程序方面整体比较简洁。在公布期，如果没有第三方基于一些诸如“近似”的理由对商标提出异议的话，整体大概会花费平均需要 9 到 12 个月来获得商标证书。
I think it's fairly straightforward. Compared with US you need to prepare your evidence of usage or you need …, just et cetera. So, from a comparative perspective, Chinese trademarks are fairly simple. I would say the most difficult is the actual approval rate in China. So we would strongly suggest you do a kind of search beforehand and also check with some local attorneys. Like if your language means something different, we have a very strict like a social moral impact element in our assessment. One example, you may find interesting is the, I don't know if it's a game producer, Kojima Productions , they have like a skeleton/skull looking and that trademark was never approved. It doesn't matter where else you've got that approved. But in China, if you see a skull in your logo, then they won't go.
Q：It’s interesting, isn't it? I think that's the crucial point, is that the cultural aspects in particular when it comes to things like design and trademark. It is so important and language obviously. And you really can't do that, but you can't wing it. As I think lots of small businesses will try and do it themselves, but this is actually something that you really can't and you really do need experts advice to help you not just with the law, but with the local cultural aspects as well.
A：Yeah, I think the tolerance level in different countries are different and we have to respect what's written in front of us. We have client who wants to register it was a tattoo company that wants register a trademark with a I don't know the guy was hoped, but I can't remember what is it called like the person that representing deaths, holding, like a knife or h…?
Q：It's called Death. The Grim Reaper, the Grim Reaper perhaps, with the scythe.
A：The Grim Reaper. So we had a client who's interested in registering that. I said it's impossible to go. They still want to try…Fine. So it was rejected in the end, but we just need to respect some of the local rules as well.
Q：Yeah, that's very interesting. JJ thanks so much for taking a time for the interviews are really nice to chat to you.. And hopefully everyone's slightly more informed as to what they do with the Chinese trademarks. And if anyone wants to get in touch with JJ feel free to reach out to me or go straight to the Way Insight website.
有趣的案例！非常感谢佳佳抽出时间接受采访，很高兴能与你聊天。我们也希望每个人都能对如何处理中国商标稍加了解。如果有人想与佳佳取得联系，请随时与我联系或直接访问 Way Insight 的官网。