Everything about the Chinese Trademark registration procedure

Registering a trademark in China remains a complex undertaking for most Western companies. Toachieve this, it is necessary to change one’s paradigm and begin thinking like the Chinese Trademark Office. This Office has made significant progress, but certain substantive and formal requirements must still be strictly complied with. Bellow are some key insights into the Chinese trademark registration procedure.

International agreements affecting Chinese Trademark registration procedures

The TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights) imposes several principles on member states of the WTO (World Trade Organization) :

• Publication prior to or shortly after trademark registration
• Registration procedure completed within a reasonable time
• Fair procedures without unnecessary complexity or costs

Chinese trademark law complies with the principles set out above. However, when examining the details, practical difficulties remain.

Tips for successfully registering a Trademark in China

File a separate application for each class

If a company’s products fall within several classes of goods and services, it is common to file a single multi-class application. Generally, the cost of additional classes decreases progressively.

In China, multi-class filing has been permitted since 2014. However, it is preferable, for the same cost, to file a separate application for each class.

Indeed, Chinese trademark assignment is only possible in its entirety. It’s not possible to assign a trademark for a single class only.

Another specificity of the Chinese classification is the existence of sub-classes. The Chinese Trademark Office considers all products within the same sub-class to be similar. This approach contradicts the position adopted by Chinese courts, which require similarity to be assessed based on several criteria such as function, utility, raw materials, etc.

However, the Office has adopted a more flexible approach with respect to Class 25 (clothing), which is divided into 13 sub-classes. Numerous trials have finally convinced the Office to adopt a less rigid stance in response to fraudulent filings targeting fashion brands…

Beware of filings by Chinese individuals!

Until recently, trademark filing by Chinese individuals has been very limited. Only representatives of industrial or commercial households or company shareholders could file.

However, the Trademark Office is considering accepting trademark filings by individuals more broadly, as part of its efforts to promote innovation and entrepreneurship.

Describe your goods according to Chinese classification

Another specific feature of the Chinese system is that the Trademark Office only accepts goods descriptions that perfectly conform to its classification. Failing this, the Office will issue a notification requesting modification. In order to save time, it is advisable to immediately submit an acceptable description.

Only international trademark applications designating China may include a different description, which the Office then accepts in accordance with Madrid Arrangement rules.

Pay close attention to registration deadlines

The average examination time for a Chinese trademark registration application is four months. As a result, the trademark is published four months after filing.

However, under Chinese law, protection begins from trademark registration, not on the filing date. The examination period therefore directly affects the protection period.

The registered trademark is protected for 10 years, and the renewal application must be submitted within the 6 months preceding this deadline. A six-month grace period is provided, in accordance with TRIPS agreements. Note that renewal is completed without having to prove any use.

Finally, a key procedural point should be noted : if your trademark applciation is rejected, you have only 15 days to file an appeal against the Office’s decision. Once the appeal has been filed, you have six months to submit arguments. The court issues a decision within nine months (with an additional three-month extension possible).

Expert support for your Chinese Trademark protection

Our intellectual property law firm DE BAECQUE BELLEC manages trademark portfolios for numerous companies, both in France and internationally. We have a network of partners in every country, including China, to facilitate the protection of your trademarks in both Chinese characters and Latin script.

Additional considerations for foreign companies

Beyond the procedural requirements outlined above, foreign companies should be aware of several strategic considerations when protecting their brands in China:

• Early Registration: China operates on a first-to-file system rather than a first-to-use system. Register your trademark as early as possible, even prior to market entry, in order to prevent trademark squatting.
• Chinese Character version: Consider registering both Latin and Chinese character versions of your trademark to maximize protection and market penetration.
• Comprehensive Class Coverage: File in all relevant classes, including not immediately intended for use, to prevent third parties from registering similar trademarks in adjacent categories.
• Ongoing Monitoring: Implement a trademark watch service to identify and respond to infringing or confusingly similar trademark applications.

Stéphane Bellec, Partner

Intellectual Property Attorney

Email: sbellec@debaecque-avocats.com

Tel: +33 (0) 1 53 29 90 00