Is it really necessary to do a comprehensive trademark search before filing?

Before filing your trademark registration applications in China, trademark attorneys will always ask you: do you wish to do a comprehensive trademark search before filing?

Advantages to do it

The advantages of doing a pre-filing trademark search are obvious:

  • You can confirm whether there are any conflicting trademarks before you file your application.
  • You don’t have to wait for a year or so to know that there is a conflicting trademark which can block your trademark registration, which you should have been known before filing (that’s one year earlier) if you had done the pre-filing search. It should reduce the uncertainty of your trademark’s status in China greatly.
  • If you find out that there are conflicting trademarks, you can take preemptive actions in advance, e.g. cancelling or invalidating or opposing the conflicting trademark, rather than waiting for a year to do that.
  • If you just cannot lift the conflicting trademark, you may consider your trademark strategy in China and amend your trademark for China. This is better than spending a lot of money to promote your brand in China, and found out later that you just cannot legally register and use it in China.

Disadvantages

Despite of the advantages of the pre-filing trademark search mentioned above, there are certain disadvantages to do the comprehensive pre-filing trademark:

  • It will increase your costs. Usually a comprehensive trademark search for one trademark in one Class will cost no less than USD 500. This is more than the cost of simply filing the trademark to China Trademark Office.
  • It will delay the process. As the comprehensive trademark search takes a lot of time, it will absolutely delay the process of trademark filing. In average, the filing process could be delayed for about 1 week if you choose to do the comprehensive pre-filing trademark search.
  • It may increase rather than reduce uncertainty. As the judgement of similarity between trademarks are quite subjective, it is not always a black-and-white issue to determine whether an existing trademark is conflicting with your proposed trademark. As such, sometimes the result of a comprehensive pre-filing search is more confusing, and no trademark attorney can guarantee what China Trademark Office will determine, which may cause greater uncertainty, rather than reducing the uncertainty.
  • It may put you in a more dangerous position. Taking an early action against the possible conflicting trademark could give an early warning to the owner of the conflicting trademark, and therefore may drag you into a fight when you just enter the China market and are not ready for the fight.

Our recommendation

Based on the above, it seems to us that a comprehensive pre-filing trademark search has its advantages and disadvantages. Whether you should do it really depends on your specific situation.

If you have already used your brand in China and built certain reputation on it, and changing your brand/logo could cause significant impact on your business, it seems that it is not necessary for you to do the comprehensive trademark search before filing.

This is because amending your trademark will not be an option for you and you can always take actions against the conflicting trademarks after your trademark applications are rejected by China Trademark Office citing certain conflicting trademarks. In this case, to keep a better position in the scenario of conflicting, it is always better to file your trademark application earlier rather than spend more time on trademark search which may not give you a lot of benefits.

However, if your brand is new to the China market and you can amend your brand or logo to suit the China market, and you just want to make sure that your trademark is registrable from the day one you promote your business in China, then yes, we strongly recommend you to do a comprehensive pre-filing trademark search, as long as you can afford it.

Having said the above, no matter what your specific situation is, you should always do a simple pre-filing trademark search to confirm whether there is any identical trademark existing. This should not take too much time and most trademark attorneys can do it without extra charge.

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