Do you think that you have a good name or design a good LOGO and can run your brand/marketing brand without worries?
Actually this kind of thinking is wrong!
First you need to understand,
▲ LOGO≠ trademark
LOGO is mainly used for communication, which is helpful for consumers to remember the main body of the company during promotion. But it isn't protected by law. Trademarks are marks used to distinguish different brands, services, and goods. Trademark can be protected by law after registration.
▲ The trademark is Territorialism
The "registered trademark" approved by the IPO is protected by law. However, it should be noted that if the trademark is to be used in different countries, it must be applied separately in different countries. For example: Brand A has applied for a trademark in China but hasn't applied for it in Taiwan. Anyone can submit a trademark application in Taiwan.
Why to say that? Let's take look at a few related typical cases:
1. MUJI
The international brand MUJI entered the China market in 2005 and used "MUJI" and "無印良品" that had registered for trademarks in China. However, China Hainan Nanhua Company registered the trademark "MUJI" for fabric products such as bed covers and towels in class 24 as early as 2001. After that, the trademark rights were transferred to China Beijing Cotton Field Textile Co., Ltd. In other words, MUJI of Japan didn't obtain the trademark right of class 24 before entering the China market.
China trademark protection adopts the "first-to-file".
Therefore, The Supreme People’s Court of The People’s Republic of China made a final judgment in 2019: Japan MUJI violated the intellectual property rights of China Beijing Cotton Field Textile Co., Ltd. in the class 24 of goods due to the use of the "MUJI" trademark. Japan MUJI was sentenced to a fine of approximately RMB 620 thousand (approximately NTD 2.61 million) and issued an apology statement.
2. Meituan
Chinese Internet giant "Meituan" encountered trademark treemptive registration in Australia. According to IP Australia, the "Meituan" trademark has recently been registered by a local China company. A Chinese team buying website called "AUSGROUPON" has also been launched. Not only that, the business names of "MEITUAN" and "MEITUAN AUSTRALIA" were also being registered preemptively by EASI which is the largest Chinese food delivery company in Australia.
It's different form "first-to-file" of China trademark, the Australia trademark adopts the "first to use". That means that the person who uses the trademark first in Australia will have the right to use the trademark.
And a typical case that the American chain fast food: Burger King had to change its name to "Hungry Jack’s" in Australia.
3. Rainbow Village
The Rainbow Village in Taiwan was registered preemptively by China businessmen in China. In addition to opening a breakfast shop under this name, it also imitated the decoration style of Grandpa Rainbow. Moreover, the company in the name "Taiwan Rainbow Village entering China market" of misleading investors to join in cooperation.
All of the above cases are being registered preemptively because of isn’t application for trademark immediately. And that will take time and effort to maintain trademark rights. There are many more cases like these. Many people always think that my brand name and LOGO will not be applied for trademark; or my brand hasn't expanded business or developed abroad, so it isn't necessary to apply for a trademark at first.
In fact, as far as the layout of the trademark, a comprehensive evaluation of importance, design, class and the region of trademark should be carried out.
Two points:
1. If there are time and geographical restrictions. To apply for the actual needs is enough.
2. If there are plans for wide-scale and wide-region sales, you should consider filing a trademark application comprehensively.
But all this still has to return to an initial point, # To apply for a trademark before marketing
It's very necessary to file a trademark application and obtain a registration before the brand is exposure! Also, it's the best way to protect brands from registering preemptively of trademarks.
