A domain as online trademark symbol in China?

A generic Top Level Domain (gTLD) aimed at protecting trademarks, combating counterfeits and fighting cybersquatting? Yes, really. The Dot Trademark Registry has introduced an innovative solution than aims to do just that, and 7,000+ brands have already registered, including Microsoft, Google, Apple, Lacoste, Rolex, BMW, Gucci, Chanel, Amazon, Starbucks, Toyota, Watsons and ASUS.

There is now a significant and growing middle class in China who actually want to buy genuine brand merchandise, but finding authentic products in the region – especially online – can be very challenging. Most major brands do what they can to monitor, investigate and enforce their intellectual property rights, but counterfeiting, trademark abuse, cybersquatting, phishing, pharming, spamming and malware all remain a serious problem.

So one domain registry has come up with an idea to counteract the issue. The .商标 registry (pronounced ‘Dot Shangbiao’ and meaning ‘Dot trademark’) has launched .商标 as an online trademark symbol to help brands establish trusted websites where Chinese consumers can easily find legitimate products. All registrants of .商标 domains must provide proof of their registered trademark or trademark application.

Dot Shangbio’s mission is to “enable brands worldwide to effectively protect and promote their products and services online in China,” – essentially, working together with brands to build a trusted Internet and to improve customer confidence in China.

One significant difference in China trademark regulations is that trademarks can be registered on a ‘first to file’ rather than ‘first use’ basis. Since proof of use is not required to apply for a trademark, brands need to be particularly proactive in registering their core brands. Another is the additional sub-classifications. Brands may mistakenly think they are covered in a class, only to find another company has registered their mark in a very similar sub-class. Chinese characters also present some unique challenges; many international brands have not determined what their Chinese-character brand names should be, or what Chinese character names they should protect. The combination of these factors leaves brands vulnerable to trademark-squatting, potential consumer confusion, brand erosion and litigation. Major reforms are being undertaken by the China Trademark Office, including the establishment of specialized IP courts, the use of approved precedent cases and more, but significant change will take time.

Domain names present similar challenges. Anyone can register within most TLDs, and it’s common to see third-party registrations of brand names, typos or domains that contain brand names (e.g. BrandNameOutlet.TLD).

Counterfeiting is also commonplace in China. According to an April report from the OECD and the European Union’s Intellectual Property Office, 63% of all fake goods produced between 2011 and 2103 came from China. Many of these goods find their way into shops and online marketplaces, where consumers find it hard to distinguish fakes from the real thing.

It should also be noted that most Chinese people do not know what ‘®’ or ‘™’ mean. They do, however, know that 商标 means ‘trademark’. For this reason, Coca-Cola recently removed the ® from its bottled water brand in China.

Using a .商标 domain helps brands establish ‘official’ websites in China and localize their branding, and it also enables consumers and businesses to find genuine brand merchandise and services. The Dot Trademark registry has established .商标 as a validated online trademark symbol in China. Before a domain can go live, each application is reviewed by its examiners to ensure the domain name matches the trademark. Visitors to .商标 websites, therefore, can trust that the actual brand is associated with the site.

If you’re doing business in China, plan to do business there, or want to protect your trademark, you should strongly consider registering .商标 domains for each of your core brands.

About Dot Trademark (.商标)

Dot Trademark TLD Holding Company Limited is the ICANN-accredited registry for the .商标 (Dot Trademark) generic Top Level Domain. Dot Trademark operates and administers all policy, regulations and technical aspects of the .商标 domain extension. Dot Trademark has collaborated with experts from the intellectual property, legal and Internet industries to develop policies that responsibly empower global trademark holders to protect and promote their brands in China. Dot Trademark offices are located in Hong Kong, Guangzhou, and Beijing.