Few days ago, a friend called and told me about a new entrepreneurial project. My friend operates in the food & beverage sector and so I have been revealed a coming soon top-notch restaurant in Shanghai. Being aware of the importance of Intellectual Property in China, I am one of the first persons outside the circle of the founders to know about the project.
With great excitement in the voice and shiny eyes, my friend introduced the concept of the new place and – finally - told me the new trademark chosen to distinguish the place. Sorry, for obvious confidentiality reasons, I cannot disclose it here.
This is not the first case I take care of this friend; we have some prior experience and so we agreed to conduct a trademark search – first - and not to rush to file the application without having cleared the registrability.
I did my homework and came back to the friend, reporting that unfortunately the registration of the trademark chosen looks unlikely in China due to prior similar trademarks in the same class. I explained that in China there are over 40 million trademarks in the registry and so nowadays is difficult to find an available slot.
I explained that – at this point – there are two routes.
First is creating different trademark candidates and trying again the trademark search to check the chances of registration. Second is insisting with the "beloved" candidate and attacking the prior existing registrations. For example, a typical cost-effective strategy is filing non-use cancellation(s) against the obstacle-trademark(s) aiming at clearing the way to the registration of the selected trademark.
Though the second route a viable one, it might take more time and more budget than the first one. I would naturally incline toward creating and choosing a different trademark with higher chances of registration. However, I am a lawyer and I tend to underestimate the difficulty of the marketing/communication creative process and overweight the legal issues.
Whatever my friend will decide, investing more in creativity and coming up with more candidates or investing more in legal tools to clear the way to the registration of its first candidate, it will be good.
After all, I thought, this new project and new trademark has no connections with the other existing projects. This is another key point that I want to highlight in this article. When an entrepreneur is launching a new project, he/she has the opportunity of choosing a trademark that has high chances of registration in the mereological class and in the territory where the project is to be developed.
Of course, the first and most important element is that the chosen trademark is suitable and appealing for the kind of products or service to be distinguished. The communication and marketing perspective is essential, but attention not to push too much on this point and forget about the legal point.
The same freedom or opportunity might not be there in other circumstances. Think, for example, to a company selling apparels in Europe that decide to enter Chinese market. Differently than my F&B friend in the story above, the apparel company from Europe is "limited" by its history and reputation. The company must fight to get his trademark registered in China. It is likely that this company will invest to clear the way to the registration of the same trademark they registered and used in other countries.
In the F&B story above, there is not al limit given by the existing business and reputation abroad. The only limit is the creativity, the patience, and a good trademark search.
So, if you ask me "which one comes first: the trademark or the search?", the answer is easy: Surely, the search, and then the search again, and maybe a new search. Finally, it comes the trademark. There is no dilemma.
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