China has become the world’s second-largest consumer market. No wonder businesses are flushing into the Chinese market and building brands. Registering the trademarks for the brands are thus of utmost importance in order to protect ones’ IP rights. Here is a brief overview of the trademark registration process in China and some of its key characteristics:
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The whole process will take around 5 – 9 months assuming straight-forward application.
Before filing a trademark application in China, it is recommended (but not a must) to conduct a trademark search in China to ensure that the proposed mark is not already registered by someone else.
Unfortunately, there is no official trademark search provided by the Trademark Office of China National Intellectual Property Administration (“CNIPA”) and you could only hire a professional trademark agent for conducting an unofficial trademark search in China.
Once the search results warrant further action, the next step is to file a trademark application with the Trademark Office of CNIPA.
The application must include a clear image of the mark, a list of goods or services that the mark will be used for, and the name and address of the applicant etc.
If a trademark agent is engaged for filing the application, a power of attorney will also be required.
After the application is filed, the Trademark Office of CNIPA will examine it to ensure that it meets the administrative requirements for registration.
If there are any issues with the application, the Trademark Office of CNIPA may issue an office action requesting additional information or clarification.
At this stage, the Trademark Office of CNIPA will examine whether the application should be refused for any relative grounds or absolute grounds.
If the application is approved, it will be published in the Trademark Gazette for a period of three months.
During this time, third parties have the opportunity to oppose the registration of the mark.
If there are no oppositions filed during the publication period, the Trademark Office of CNIPA will issue an electronic certificate of registration for the trademark.
China trademark lasts for 10 years from the date of registration, rather than application, and can be renewed for successive 10-year periods.
Simplified Chinese is the official language for trademark registration in China. This means that all application documents, including the application form, trademark specifications and supporting materials, must be submitted in Simplified Chinese.
In this connection, if the original documents are in a different language, they must be translated into Simplified Chinese. This can increase the time and cost of the registration process. It is crucial to ensure that the translation is accurate and conveys the intended meaning of the original document. Any discrepancies or errors in the translation could potentially impact the validity of the trademark registration. Therefore, it is essential to be diligent in the translation process to protect your trademark rights in China.
As shown in Trademark Classes? Basic but not Simple!, there are 45 trademark classes of goods or services that can be registered for as defined by the Nice Classification System. In China, it is possible to file a multi-class trademark application, which means that a single application can cover multiple classes of goods or services. This can be beneficial for applicants who plan to use their China trademark across a range of different products or services, as it can save time and reduce administrative burdens associated with filing multiple applications. The overall fees for multi-class applications are typically lower too.
You should however appreciate that higher complexity will be involved, as filing a multi-class application requires careful consideration of the goods and services covered by the trademark, as failure to register in the correct classes can result in a limitation of the protection afforded by the China trademark. Filing a multi-class application may also pose a risk of rejection of the whole application if the trademark is found to be similar to an existing trademark in any of the classes.
It is important to note that China adopts a unique sub-class system. In China, each of those 45 trademark classes is further divided into multiple sub-classes. For example, under Class 25 (Clothing, Footwear, and Headgear), there are several sub-classes that further categorized the goods within this class, like sub-class 2501 which covers outerwear, underwear etc., sub-class 2507 which covers shoes, boots etc. Within each sub-class, there may be further sub-categories or specific items. For further examples, item no. 250155 (under sub-class 2501) is for t-shirts, item no. 250014 (under sub-class 2507) is for boots etc. If a trademark is registered for certain sub-classes, the protection will likely be limited to the specific goods or services covered by those sub-classes but not those in other sub-classes.
When filing a China trademark application, preferably the applicant should choose the standard items in accordance with the sub-group system, and non-standard items are less likely to be accepted. Additionally, the application fee will be higher if more than 10 items are chosen for each class. Therefore, the applicant should carefully consider which sub-classes and specific item to include in the application to ensure that the costs are reasonable.
As you can see, it could be a huge challenge for applicants who are unfamiliar with this local classification system.
Unlike some other jurisdictions, China does not allow for the registration of series marks, which means that variations of a trademark, e.g. a word mark in capital letters Vs in small letters, or a mark in black-and-white Vs in colours etc., cannot be filed under the same application. Instead, each variation must be filed as a separate application, even if the variations are similar. This can make the registration process easier for businesses as it is simple and straightforward. It however can also make the application process more time-consuming and costly.
It’s worth noting that China is a civil law jurisdiction and thus follows the “first-to-file” rule, which means that the first person or entity to file a China trademark application for a particular mark will have priority over subsequent applicants, regardless of whether they have used the mark in commerce. Therefore, it is important to file as soon as possible to avoid someone else registering the same or a similar trademark ahead of you (see also Common Law System is Better than Civil Law System?)).
The first-to-file rule provides greater certainty in the registration of trademarks, as the person or entity that files first will have priority over subsequent applicants. It also helps protect the rights of trademark owners by preventing others from registering the same mark. It however can also result in the hijacking of trademarks by individuals or entities that file applications in bad faith, with the intent of profiting from the trademark. Besides, the first-to-file rule does not provide protection for prior users of a trademark, which can be a challenge for businesses that have used a mark in commerce but have not yet filed an application.
We hope you find this summary informative and can facilitate your self-application in China. That said, DIY trademark could be tricky and if you need professional advice and guidance on trademark law, including the registration process, potential issues, and strategies to protect your China trademark, Trasomark and a reliable trademark agent in China are available to assist you.
Trademark, as the legal basis of a brand, fundamentally serves the purpose of distinguishing the origin of goods/services. Therefore, the trademark to be applied cannot be identical or similar to prior trademarks owned by others. In recent years, China has consistently had the highest number of trademarks registered globally.
Trademark, as the legal basis of a brand, fundamentally serves the purpose of distinguishing the origin of goods/services. Therefore, the trademark to be applied cannot be identical or similar to prior trademarks owned by others. In recent years, China has consistently had the highest number of trademarks registered globally.
There are four jurisdictions in China, Mainland China, Hong Kong SAR, Macao SAR and Taiwan, which are subject to different legal systems, including trademark law. Therefore, to obtain trademark protection in these four jurisdictions, it is necessary to apply for trademark registration separately.
