What steps must one take to register a mark in China? As in any jurisdiction, it is prudent to conduct a clearance search to learn about the landscape surrounding your mark. China is a first-to-file jurisdiction, meaning that the first individual or company to file for trademark registration is the rightful owner of the mark; this is unlike many other jurisdictions where the entity who first uses the mark can lay claim to it. This feature of the China Trademark Law has led to countless cases where foreign brand owners have few tools to return their mark from so-called “trademark squatters”, individuals who make money by registering brands before their rightful owners and subsequently requesting payment for the rights transfer when the brand owner demands to return their trademark.
Considering this fact, conducting a clearance search is clearly an important first step to take in your trademark registration journey. It is also important to conduct this search prior to application as the CTMO examiners will conduct the same search across their database when examining the trademark registration application, looking for prior marks which may be considered similar not only in appearance but also in their registered classes, as similar marks may create a likelihood of confusion among consumers. Generally, these conflicting marks can be found prior to application, so conducting a clearance search is important to avoid lengthy back and forth between the CTMO, or an outright refusal of your mark upon registration, thus saving brand owners money, time, and frustration.
Traditional trademark clearance search can be a lengthy process that requires wading through vast amounts of data and having expertise to identify marks which are not obviously the same but may cause confusion – all requiring time, money, and relevant training. This process is transformed with the use of AI on a web-based platform. The trained algorithm searches across a database of registered and published marks, identifying similarities in image features against the searched mark. Not only does this solution shorten the clearance search from days to seconds but the likelihood that the algorithm will find similarities that a human might miss is enough reason to give it a try. Many of these new AI management platforms offer such searches for free, so there really is no excuse for brand owners to not upload their marks and see what’s out there. What’s more, its available for free on Kangxin eService Platform.
The search results are comprehensive and give users an in-depth look at the landscape surrounding their mark. The feature that the AI algorithm adds is the similarity ranking of every result. The algorithm has been trained to recognize image features between marks that may be considered too similar and thus would bar the searched mark from registration, or at least cause some difficulties. Being aware of this is invaluable for brand owners, as it helps to define what they can expect when registering their mark in China.
Of course, the system is not a human expert that can advise on strategies and provide in-depth analysis of the search results. This is where the legal experts come in –attorneys with years of experience in trademark prosecution, and this is precisely the advantage of these “middle ground” platforms – users have the advantage of both the AI technology and the expertise of a traditional law firm. To help make sense of the search results (should a user need such guidance), for example, an availability analysis is available. The mark a brand owner seeks to register will be analyzed by experienced attorneys who will compile advice for registration within two days, so not a moment of valuable time is wasted.