According to the latest Annual Development Report on China’s Trademark Strategy 2017, there were in total 30,571 trademark agencies in China, among which 9,048 were law-firms. How to choose a proper Agency for your trademark service in China?
As mentioned in my article regarding Trademark application, foreign applicants are not allowed to file the application by themselves. Appointing a local Chinese trademark agency is a must. Choosing a proper IP Agency is not easy for non-Chinese. Not only is trademark a very professional area, trademark in China is cross-border for non-Chinese.
Generally, in China, I only recommend the below three kinds of IP Agency:
- Global IP Agency/Law Firm with office in China
- Chinese IP Law Firm or traditional big Local IP Agency
- Small and middle-sized local Agency split out from the above two
Global IP Agency/Law Firm with office in China
Representative:
Bird & Bird, Rouse International, Baker and Hogan Lovells.(Tire 1 ranked by Managing Intellectual Property)
These four Global Agencies, with branch offices in China for several years, largely represent the highest level of service among global IP Agencies. No communication misunderstanding, each case would be treated at legal level which means good sense of risk control. Options and risks are elaborately provided at the outset of each stage of billable work. While, high level of service also means highest service fees. Most of the work for each specific case would be charged on hourly basis at each stage.
In my opinion, the work style of global IP Agencies/Law Firm only suit for global brands with sufficient budget investing on IP issues. I previously worked at Rouse International for several years and almost all my clients are globally recognized brands. They are willing to invest a lot on IP expecting a best service. They are not result-oriented as they believe that you have done your utmost for a best result. However, the service is not affordable for most budget care business participates.
Chinese IP Law Firm or traditional big Local IP Agency
Representative:
King & Wood Mallesons; Beijing Wanhuida IP Firms; CCPIT PATENT AND TRADEMARK LAW OFFICE; Unitalen IP Agency. (Tire 1 ranked by Managing Intellectual Property)
King & Wood is the Law Firm performs best on IP area among all the Law Firms in China. The other three are the most famous IP Agencies established and developed parallelly with the China Trademark related Legal and Government System. They hold the essence of Chinese trademark practice and human resource. Actually, most of the attorneys from the above mentioned global IP Agencies/Law Firm had working experience from these four Firms. There is no need to worry about their proficiency. Just follow their advice which is no doubt based on their understanding of the latest and most reliable information in trade mark practices.
I previously worked at Beijing Wanhuida IP Firm for several years. The price from this kind of Firms is not much lower than the global Firms. They also charged on hourly bases by stage for certain cases. One of the obvious differences is that they usually do not charge for pre-consulting while global Firms do.
Free of charge advices from these kind of agencies are always reliable. However, as free of charge advice are not bounded by due diligence, you may only get the answer to your question and may not expect their full degree risk warning and further potential predictable risks.
More and more global brands turns to this kind of IP Firms when these Firms appear to their eyes. Law and practices are frequently changing in China. Local Firms sometimes act faster than global firms.
Small and middle-sized local agencies split out from the above two
There are thousands of small and middle-sized local agencies. Small and middle-sized local agencies dealing with trade mark issues with high quality and lower costs do exist. These agencies are generally set up by person with several years’ working experience at top Agencies. This kind of Firms is the best choice for foreign startup and budget care business. However, this kind of Firms is not easy to be found. Here is one tip: if you or any of your acquaintances are dealing with trademark issues in China with the above two mentioned expensive IP firms, just ask your or your acquaintances’ contacting attorney from China to recommend a cheap Firm. They usually know reliable cost-effective Local Firms. This is because that all this kind of Firms are found by his or her previous colleagues. If he or she is satisfactory, his or her previous colleagues will not be bad. And the costs are much more affordable.
Not recommended Agency:
General Local law Firm
Law firms are not authorized for trademark agent business before 2014. A law firm used to cooperated with a trade mark agency conducing comprehensive trademark issues before 2014. Following the revised Trade Mark law in 2014, the trademark agent market was opened to Law Firm. However, as new entrants to this field, law firms are still on the way learning the rules, the procedure especially for basic application which is low profit but time consuming. Seeing from the several years’ development, most of the law firms show little interests in trademark agent business (except King & Wood). The situation of outsourcing basic application business to a trade mark agent has not been significant changed after the implementing of the new Trade Mark law.
So-called big firms
Please note I emphasize “traditional” from my recommendation of the second choice: traditional big Local IP agencies. Recent years, a lot of big firms arise all claiming primary status in China. They are pulled up by capitals, marketing and public relations but not by accumulating of decades of experience. They are big but that is all. A very low price for trademark application attracting you on board and further unexpected fee will be charged.
Unfamiliar small and middle-sized local agencies
They are not recommended because some are even danger. I previously met some ridiculous situation. For example, one day, my client sent a Refusal Notice to me seeking my commons for further actions. The Notice stating: the trademark was conflict to a prior copyright and therefore rejected. Refusal appeal shall be filed within 15 days after receiving the Notice…… How ridiculous! How and when did the Trademark Office begin to review copyright? I carefully studied the Refusal Notice and it looks like a real one. I checked on the CTMO database and just found that the trademark was already published for registration with no Refusal Notice. I realized that the so-called Refusal Notice was just a cheat.
Last but not least, I personally think that choose the right attorney is more important than the right agency.