How to register TM in Asian countries?
If your business is developing, including within Asian markets, then I encourage you to protect your brand in every country. Without a registered trademark in a certain territory, a business is not only vulnerable, but in some cases can violate the rights of third parties, which leads to unnecessary disputes and unnecessary spending of funds … what should be done to avoid risks and be protected? It is enough to register a trademark.
So, if we are talking about the main markets of Asia – China, Japan, and South Korea – then, in fact, the procedure for registering a trademark practically does not differ from CIS countries and Ukraine. If an applicant wants to file an application for the registration of a TM, there is a list of classes for which this trademark is registered, and in this list of classes there are goods or services by which this applicant operates under this trademark.
But the specifics of trademark registration in Asia require that you accurately select the list of goods or services for which this particular trademark is registered. That is, it is impossible to do this in the Ukraine or Russia – to apply for the entire class for registration. First, this would require you to pay many much official fees. Second, it is irrational because local legislation stipulates that it is better to register a trademark for specific goods or services.
Therefore, at the stage of filing an application for the registration of a TM in Asia, you need to decide for what goods or services the applicant is going to use this trademark in the future or for which goods or services he already uses it. This is the first key step for trademark registration in Asia.
The second important aspect is that they have hieroglyphs, both Chinese, Japanese, and South Korean, which are specific. It is not always possible to correctly translate a character from Latin to hieroglyphs. In this case, all experienced specialists in the field of intellectual property recommend registering two TM’s – in Latin, that is, in the original language of how the brand should sound, and the second registration – translated to the characters that are designated by the applicant exactly – how he will position himself in these markets. That is, not how patent attorneys translate this name or how the consumers will translate it into hieroglyphs, but how exactly the applicant will translate or already translates it in his activities within these countries. Therefore, it will not be out of place to turn to native speakers of the region where registration will be conducted.
The third feature of registration of a TM in Asia is that in some countries, in particular China, it is worth registering two separate applications, and thus receive two separate certificates, if the applicant registers in two different classes. That is, there is no such thing as registering one application for two classes at a time. There is one application and for this one application there is a separate class.
Asian countries also have a long registration period for the brand – starting from 18 months. But, as in other countries, registration is valid from the date of application.
Let me remind you that right now I can help you with the registration of a trademark and protect your brand in China. Shall we start?