What should have been done before launching your brand in China?

Borsam IP
Borsam IP


Facebook announced to rebrand its parent company name into “Meta” last year, implying this tech giant’s new development trend to metaverse. Before the official announcement of the new name, the word and graphic combination has been applied for trademark registrations in China in all 45 Nice Classes under a Hong Kong company. Before launching a brand in China, there is actually a lot of preparatory work to be done on the trademark.


Though the new company name “Meta” doesn’t affect the mainstream social media being known as Facebook, the change of name gave rise to a wide range of concern among the IP field, especially in China, where the company had devoted a lot to fight for the “Facebook” trademark in 2016, countering to a Chinese company which had registered “face book” with blank space in the middle of the trademark.


Given the high cost to fight against maliciously pre-emptive registration, at this time, we may wonder if the new “Meta” name with the infinite sign had been registered as a trademark in China. As a matter of fact, before the official announcement of the new name, the word and graphic combination has been applied for trademark registrations in China in all 45 Nice Classes in August 2021 and October 2021, under the name of Cody & Crew Limited, a Hong Kong company which is possible to be an associated company with Facebook.


It’s obvious that Facebook didn’t want to unveil the fact of changing the company name by merely filing a trademark application in China, but the prompt trademark application is necessary, so they chose to proceed anonymously——filed the trademark under the name of an unrecognized associated entity.


However, the trademark is accused of being similar to several prior trademarks of others, such as WeChat Channel’s infinite logo and the Chinese name of metaverse “元宇宙”. It seems there is a long way to go for a certain and exclusive right to the Meta trademark.


As we can see from the Meta trademark, the application may be refused if CNIPA finds Meta’s logo is similar to WeChat Channel’s logo. The preparation for launching a brand in China has been a big subject that we have many things to learn, practice, and fix.


For example, some applicants may find their trademark had been registered before they officially launch the brand in China, because the products are offered online, and the trademark is available for customers and potential distributors all over the world. The prior similar trademark might be registered by a trading company or an e-commerce operator and become an obstacle to the application of the real trademark owner.


Not as strong as Facebook, we still need to file the application for trademark registration in time and adequately prepare for it before filing.


First of all, when you decide to set foot in business in China, your products may be manufactured, offered for sale, or exported to the country. That means your brand name or the logo fixed to the products will probably act as the identifiable sign to distinguish the source of the products on the market, which is a trademark actually. Based on the actual goods or services you provided, the trademark should be registered for different classifications. You may need a trademark attorney to determine which Class you need to apply for.


Secondly, ruling out the prohibited or high-risk trademark according to the law and prior existing trademarks. Suppose your original brand name or logo lacks required distinctiveness or involves a certain factor that may cause negative social effects, such as religious or filthy factors, or being suggestive in relation to goods rather than the applied-for goods. In that case, that may result in a refusal based on absolute grounds.


Further, a trademark search should be conducted before filing the application to find whether similar trademarks prior filed or registered may bar your application. Basically, the protection of a registered trademark conforms to the Nice Classification. So more specific the goods or services items you prepare, the more accurate search result you may have.


At last, you should remain concerned about the status of the application. The application will go through the procedures of formality check, substantial examination, and trademark publication until registration. It is important to keep in touch with your local trademark attorney in case any notification is issued from the Trademark Office and requires a response.