Companies that operate on a purely national basis will normally begin by registering brands and trade names as trademark rights in their country of residence (a national right). However, given that few businesses operate on a solely national basis these days, it is recommended to also consider registrations in certain other key jurisdictions, even in the early stages of company or brand development. It may be more advisable, for example, to start by obtaining protection across Europe via a European Union Trade Mark. Your China trademark lawyer will be able to advise you as to the most suitable route for protection, given your market presence and budget.

How do I register a trademark in China?

Before that, however, you will need to make sure that what you are planning to register is registrable. China uses the International Classification of Goods and Services. There are 34 classes of goods and 11 classes of services. Each trademark application applies only to one class of goods or services. Therefore, if the product you wish to register falls into two or more classes, you will need to make two or more applications.

For a trademark to be registrable, it must be distinctive and capable of allowing a consumer to distinguish the particular goods or services from other branded goods or services. According to China trademark laws, a trademark can be letters, words, names, signatures, numerals, devices, brands, labels, tickets, shapes, colors, aspects of packaging or any combination of these.

Trademarks that can be registered should possess some intrinsic quality making it unique and distinctive. Such marks should be invented or fanciful. For example, an invented word, such as “Legvice”, short for legal advice, is registrable, as it is distinctive.

Trademarks that cannot be registered include:

•  Descriptive marks – such as “Cheap Piping Ltd” or “Good Repairs Ltd”
•  Marks offensive to public policy or morality
•  Deceptive marks – such as “Paris Toilet-bowls”, when they are in fact made in China
•  Marks representative of China or governmental authorities
•  Marks resembling other earlier marks
•  Marks resembling other well known marks
•  Marks common to the trade – such as “Delicious Steakhouse”

A priority claim is where one has already registered or applied to register the trademark in another country, but this country must be a member of WTO or the Paris Convention. The register making a priority claim would be given priority over other registers.

Trademark registration: national rights for brand and trade names

After making an application for a trademark, a search would be made by the Registrar for other similar or conflicting trademarks. When this search is complete, the trademark would be published in the Trade Mark Journal. If no opposition to registration is made within two months, the registration of the trademark is then complete and a registration certificate will be awarded to the owner.

Whichever route you take, you should aim to file a trademark application before the launch of any new brands or trade names, as the process will not only help you to protect your own trademark rights, but it will also identify any pre-existing trademark rights that may impact your ability to use your chosen brand name. Where possible, it is also recommended to involve your IP advisers at the early stages of brand development, as the more original and ‘distinctive’ the word or sign chosen, the easier it will be to obtain and enforce trademark registration.

If you have launched your products and brand names without registering for trademark protection, you may still be covered by ‘unregistered’ trademark rights, assuming certain conditions are met. You may also be able to obtain registered protection for these brand names even though they are already in use. Speak to your China trademark lawyer trademark attorney for advice on enforcing or registering your existing brand, company or trade names.

The benefits of Registered Trademark are numerous:

Registration ensures that you can safely use your trademark without worrying about any unintentional infringement on third party’s trademark.

•  Trademark certificate is the best proof of your claim on the mark.
•  Registration enables lawful use of ® next to your trademark.
•  Registration blocks other people from registering an identical mark on your specified goods.
•  Registration gives you a good ground to oppose any attempt by your competitors to register a confusingly similar mark.
•  Registered mark is a preliminary for planning to expand your business by franchising.
•  Registration empowers you to take legal action against counterfeiters.
•  Registered trademark is a corporate asset which is useful when making valuation of your company in M&A or IPO situations.

Steps of registering a trademark in China

This is a basic introduction to the trademark registration process. For details on China trademark lawyer’s specific trademark services, including searching, watching, international filing, anti-counterfeiting and enforcement support, click here for our services overview page. To contact one of our trademark attorneys or to review their expertise in your sector, find out more at our website.

Step 1: Is your trademark capable of registration?

In order to obtain a trademark, your chosen brands, trade names, logos or slogans etc need to fulfill a number of conditions of registration. In other words:

The chosen mark must be available for registration in your chosen class, i.e. the same or a similar trademark must not have been already registered in your class or jurisdiction for the same or similar group of services;

The chosen mark must be ‘distinctive’: the more distinctive the brand name you select, the more likely it will be that your trademark will be awarded protection by the relevant register.

The chosen mark must not be too ‘descriptive’: if the trademark is too descriptive of the goods or services or any characteristics of them, then the trademark office will likely object to your mark. Often, the addition of an invented word, logo or picture could make your chosen trademark less descriptive and, therefore, increase its chance of registration.

As part of the trademark registration process, your China trademark lawyer trademark attorney will generally recommend undertaking a trademark search prior to any new application in order to identify the most similar published trademark registrations or applications to the trademark being filed. These results will identify not only whether an identical trademark already exists, but also whether a similar brand or trade name has been registered. This is important as third parties may also choose to object to your chosen trademark on the grounds that it is confusingly similar to their own.

Step 2: The trademark application process

A trademark is obtained by filing a written application at the relevant trademark office. This includes a description of the mark and the goods and services to which it applies (the class). Some countries have additional requirements, relating to how and what material needs to be provided and which classification system applies. After the application has been filed, it will be reviewed by examiners at the relevant trademark office and published to provide third parties with a two-month window in which to ‘oppose’ the application if they believe that it infringes their existing trademark rights. These oppositions will need to be responded to before the trademark will be officially registered by the trademark office (the ‘opposition’ period).

Once registered, a trademark will be subject to maintenance fees (also known as renewal fees or annuities). In most countries, these fees must be paid every 10 years in order to keep the mark in force.

Step 3: Extending protection into foreign markets

Trademarks are territorial rights: their registration and enforcement is governed by national laws and the rights conveyed can vary country-by-country. It’s not possible to register a truly ‘global’ trademark right for a brand; however, you can opt to register an International Right (IR) or a European Union Trade Mark (EU TM) depending on the overseas jurisdictions of most interest to you.

You can find out more about trademarks and the processes for obtaining, enforcing and exploiting trademark rights, here. For information on China trademark lawyer’s trademark services, including searching, watching, international filing, anti-counterfeiting and enforcement support, click here for our services overview page. Alternatively, contact our customer support team, using the contact form at the top right of this page.