With a rapidly growing economy and a massive consumer market, China is an increasingly sought-after destination for businesses around the globe. However, establishing and protecting your brand in the Chinese market can be challenging due to complex trademark laws and high levels of trademark infringement. To navigate these hurdles, it is crucial to understand the trademark registration process in China and develop a strategic approach to optimize your chances of successfully protecting your brand.
In this comprehensive guide, we will shed light on key steps and considerations for optimizing trademark registration in China.
Conduct a Thorough Preliminary Research:
Before diving into the registration process, it is essential to conduct comprehensive research to ensure your trademark doesn’t conflict with existing ones. Start by conducting a search on the China National Intellectual Property Administration (CNIPA) database, which will help you identify existing trademarks similar to yours. Additionally, consider conducting Internet searches and consult with a local intellectual property attorney or a relevant third-party agent to gain a deeper understanding of existing trademarks and potential conflicts.
Except for those that have been locally registered, international trademarks are not acknowledged in China. Therefore, to register a trademark in China, there are currently two approaches:
China National Intellectual Property Administration (CNIPA)
for a national trademark application
World Intellectual Property Organization (WIPO)
submission for a trademark within a third-country alongside a designation to China
While clearance of China national applications typically takes anywhere from 6 to 9 months, the WIPO approval procedure may take between 9 and 18 months. In addition, given the administrative and contrasting classification concerns, WIPO submissions directed to China frequently end up in declines since China’s trademark structure and classifications differ from the majority of other countries. Hence, our experts urge businesses to submit their applications seeking China national trademark registration.
Assess Classifications and Categories:
China adopts the Nice Classification system, which categorizes goods and services into approximately 45 classes. It is crucial to accurately determine the appropriate class(es) for your trademark registration. In China, a broad specification is recommended to cover potential future expansions and to prevent others from using similar marks in related industries. A comprehensive compilation of items or amenities that require trademark protection must be submitted along with one application per category of products or services.
File for Trademark Registration:
To initiate the registration process, you need to submit an application to the CNIPA. It is highly recommended to engage a registered Chinese trademark agent to handle the registration on your behalf. They will ensure your application meets the necessary requirements, provide guidance on the right class(es), and handle correspondence with CNIPA throughout the process. It is also recommended that you submit an application to the CTMO through an authorized intermediary if you do not have an official residence or headquarters in China.
Documentation and Required Information:
The trademark registration application typically requires the following key information:
• Correct and clear representation of the trademark.
• Detailed information about the applicant and their address.
• Specification of goods or services associated with the trademark.
• Proof of claim, such as a notarized statement of intention for use or evidence of prior use.
• A duplicate copy of the applicant’s certification of incorporation.
• The candidate’s authorized representative’s signature on the statement of authorization.
China recognizes both Chinese characters and the Roman alphabet for trademarks. It is advisable to register your trademark in its original form, as well as in Chinese characters if they are applicable for your brand. To prevent any misinterpretation, international candidates must also be mindful to provide a coherent Chinese version of all the paperwork. Such a measure aids applicants in safeguarding their business entities against unintentional infringement. Ample attention must be given to phonetic translations as well as literal translations.
China follows the first-to-file principle, meaning the registration is granted to the first applicant rather than the first user which means that the Chinese law grants candidates who filed their trademark applications first priority protection. Therefore, it is advised to file the trademark application as soon as possible to facilitate your company’s entry into China.
Bare in mind that only the trademarks that have been registered in China’s own territory are recognized. Also, the trademark you choose for your business must be unique and cannot bear any resemblance to the symbols of any state, entity, or institution. A virtual database maintained by the China Trademark Office (CTMO) allows users to determine whether a trademark is eligible for registration.
Trademark Monitoring and Enforcement:
Trademark registration is only the first step; actively monitoring and enforcing your rights is equally important. Regularly review the CNIPA database for potential infringing trademarks and monitor e-commerce platforms for unauthorized use of your brand. Promptly take legal action against infringers to protect your rights.
Estimated Timeframes for Trademark Registration in China:
• Substantive evaluation: This review procedure is anticipated to last a period of six months. At this point, the governing body either issues a rejection notification or proceeds the process of registration to the subsequent phase.
• Formal evaluation: The minimum duration has been reduced under the updated policy from the previous requirement of a month and a half to just a month’s time.
• Trademark allocation review: Reviewing potential trademark assignments is time-consuming for organizations planning to be operational in China. The timeframe for this evaluation has been shortened to a two-month duration.
• Trademark registration in the official database: A three-month window following the official release date is open for third parties to submit an objection to the CTMO. If no objection is submitted (or if one is submitted but is rejected), the trademark gets registered, and a decade of protection begins at the conclusion of the three-month objection period.
Revision and extension of trademarks: In most cases, this procedure spans a duration of two months.
Successfully navigating the trademark registration process in China requires a strategic and proactive approach. By conducting thorough research, engaging legal professionals, accurately classifying your trademark, and actively monitoring for infringements, you can optimize your chances of effectively protecting your brand in the Chinese market. Remember, protecting your intellectual property early can safeguard your business and open new doors for growth and success in this dynamic economy.