Ivanka Trumps the System: Trademarks Rights in China

Ivanka Trump recently faced criticism after successfully gaining trademark registration for her brand in China. While obtaining international trademark protection for your global brand is generally a good strategy, the issue with Ivanka’s trademark registration was the timing. The Chinese registration for three of the Ivanka Trump trademarks were granted on April 6, 2017, which conveniently happened to be the same day that Trump and her family dined with Chinese President Xi Jinping. The Chinese government denies that it gave any special treatment to the Ivanka Trump brand in the trademarking process. However, an application for a Chinese trademark typically takes anywhere from 18 months to 2 years, and Trump’s trademarks were granted after an estimated 9 months. Special treatment or not, Ivanka is clearly doing something right because she now has 16 registered trademarks in China, ranging from clothing and jewelry to spa and beauty services.

For those without the option to dine with the Chinese president, the international trademarking process can be complicated and tedious. Regardless, registering trademarks internationally is crucial for brand owners looking to conduct business globally and protect their business assets. A trademark can be an extremely valuable asset for a business.

A trademark can be any word, phrase, symbol or design (or a combination thereof), which is used to identify the source of goods or services. Most of us are inundated with trademarks in our everyday lives, which include everything from the Apple logo to the golden arches of McDonald’s. Once one obtains proper trademark rights, he or she can prevent competitors from using the mark without permission and also license the mark to third parties.

In China, trademark protection is critical, due to the high volume of counterfeiting activity that the country has become known for. The Chinese trademarking process typically begins with a search of the existing trademarks in China. This is done to ensure that a similar mark is not already registered in the country. China issues trademarks on a first-to-file basis, so it is important to conduct a search prior to beginning the application process. At this point, you would proceed with preparing all documents and application forms to be submitted to the Chinese Trademark Office, which has to be done through an officially recognized agent in China. Next, China’s State Administration of Industry will perform an initial formality check, followed by a substantive examination from the trademark office. If the mark passes the substantive examination, then the mark will be formally approved and you will have trademark protection. A successfully registered trademark is valid for 10 years in China, with renewable periods of 10 years thereafter.

Again, the application process can take up to two years, so planning out a timeframe for growing your brand is important. In fact, it is highly recommended that you begin the application process as soon as possible, even if you won’t be doing business in China for a few years. The long application process, combined with the “first come, first serve” policy of the Chinese Trademark Office can cause some issues for applicants. Most notably, if your mark is not registered and another party registers your mark in China before you do, then that other party will have the legal right to forbid your product from entering China. The other party will have the legal right over you as long as they registered the mark first, regardless of how long you have been using your mark.

Another consideration for international registration is the “The Madrid Protocol,” which is an international system that allows for trademark registration in multiple countries throughout the world. Currently, there are 98 member countries. The U.S. is a member country, and therefore the system is open to any U.S. trademark applicant. The applicant must first file a trademark application with the U.S. Patent and Trademark Office (“USPTO”), and then the applicant must file an additional application for international registration with the USPTO. At this point, the USPTO will certify the application and send it to the International Bureau of WIPO. Provided there are no issues, WIPO subsequently registers the mark on the International Register and publishes it in the WIPO Gazette of International Marks. WIPO is also responsible for transmitting the application to the trademark offices in each designated country. Each designated country will then examine the registration according to its own trademark laws and requirements. The examination process by each designated country is administered in the same manner as if the application were an individual national application. In the event that any of the designated countries notify WIPO of a refusal, WIPO will relay the refusal to the applicant and the USPTO. At this point, the applicant has to appoint local counsel in the designated country to respond to the refusal in accordance with any local laws. On the other hand, if the international registration is successfully granted, the registration will be valid for an initial period of 10 years, with 10 year renewal periods.

The two key advantages of the Madrid Protocol System are cost effectiveness and convenience. An international registration through the system could cover up to 98 countries, and the cost of this registration is significantly lower than paying each country’s registration fees individually. As for convenience, there is only one application to file and one office that issues the registration and renewals. China is also a member to the Madrid Protocol, so if you are seeking trademark registration in multiple countries, including China, then going through the Madrid Protocol application process might be the best option for your mark. Whatever route you choose, know that it can be a slow process, and it is always important to have an experienced attorney assist you along the way.

At KHS, we work with business owners in establishing and implementing a proper international trademark protection and monetization strategy, including international trademark registrations and prosecution. We also represent clients in enforcing trademark rights, including without limitation issuing and/or responding to cease and desists and representing federal and state intellectual property litigation.