With so many changes in recent months and years in China, an updated quick reference for navigating the country’s intellectual property landscape is needed. Below is the Quick Guide on trademarks in China. Look our for our guides to patents, copyrights, and other IP considerations soon. More questions? Contact our Senior Counsel, Brandy Baker at [email protected].
When and how should you file your trademark in China?
The short answer is to file soon and file broadly.
China is a “first-to-file” jurisdiction which means that generally, the first party to register a mark will have priority to use that mark. There are a few exceptions to the rule, but it is easier to file early and avoid the uphill battle to invalidating or opposing problematic marks filed by third parties. The first-to-file system has led to a lot of issues with bad faith filing in China, but is also a system that can be used to a brand owner’s advantage as they have a chance to file more broadly. Both direct national filings and international filings are available, note that international filings will follow a different timeline from the typical process discussed below. Generally, direct national filings are preferred because of the faster time to registration- but there are some situations where an international filing may be a better route.
Different from other jurisdictions, China does not require trademark filers to prove use during the prosecution of the trademark. However, a registered trademark does become vulnerable to cancellation for non-use after three years of registration.
Navigating China’s classification of goods and services can be confusing to those not familiar. While China does follow the Nice Classification, it further breaks down the goods and services into subclasses - it is these subclasses that can make things murky. Often, we will recommend filing marks covering all the subclasses in a class to block third parties as a defensive measure. What you need to know is that apart from a few exceptions, classes and subclasses are considered dissimilar which means that another party may be able to register an identical or similar mark in a different class or subclass. Strategies must be implemented to address potential issues and working with Chinese counsel can help you find the best path considering budget and activities, but keep in mind that filing your own trademarks broadly in other classes and subclasses is a wise approach..
In China, one may register a trademark consisting of characters, letters, numbers, devices or a combination thereof provided they are distinctive. Non-traditional marks are also available, including 3D, color-combination, and sound marks - however, these non-traditional trademarks are a newer addition in China and have rarely been granted.
On the other hand, certain things cannot be registered as trademarks or are restricted such as marks related to state or geographical names, flags, and other related national or intergovernmental signs. Marks considered discriminatory, fraudulent or detrimental to socialist morals or customs may also be denied,
Should I register the Chinese language equivalent of my trademark?
Registering a Chinese language mark should be seriously considered. Registration of the Latin mark will generally not block others from registering its Chinese equivalent. When looking at Chinese equivalents you may consider translations, transliterations, or a combination thereof, while some may consider developing new branding specifically for the Chinese market due to mere preference or because of issues registering translations and transliterations. Keep in mind that there have been many famous cases of bad faith filers registering the Chinese equivalent of well known international brands - Tesla, Jordan, New Balance to name a few.. Also, note that if you are looking to sell in China, the majority of Chinese consumers do not speak English or will be more comfortable with Chinese branding, so its best to develop and register a Chinese language trademark, otherwise it is possible that the market may develop its own “nickname” which may not be ideal or flattering and then squatters may rush to register those nicknames. For many reasons, registering a Chinese language mark is an important consideration.
The registration process is fairly straightforward. Certain documents are required when filing a trademark including a business registration certificate, a power of attorney, an application form, and a copy of the trademark.
There has been a focus on decreasing the time between filing and grant of a trademark. By law, if all is in order and barring office actions, a mark must be granted or refused within 9 months from filing. However, in recent times we are seeing applications fly through as quickly as 4-5 months.
The cost for trademark filing can vary and additional costs will come up if the applications faces office action, trademark filing can be as low as USD 300 via our platform, with traditional filing service at a reasonable cost as well. While multi-class applications are available in China, there is currently no cost savings and with the flexibility of separate class applications, multi-class applications are not suggested at this time.
Upon grant, an electronic certificate as well as a physical certificate will be received. Once registered, an ® may be used with the mark, and keep in mind that fines could be applied for using the symbol prior to registration. The validity period for a registered trademark is 10 years, starting from grant and this period can be extended for continuous 10 year periods. As mentioned above, a mark may be challenged by any party for non-use starting 3 years after registration, so be prepared to prove use or re-file.
What should I know about refusals and oppositions?
When a trademark application is denied, the applicant may appeal the decision by requesting a review of refusal within 15 days upon receipt of the notice. A decision on the appeal should be made within 9 months though a 3 month extension is available. If dissatisfied with the decision at appeal, a second and final appeal is available before a Court and must be requested within 30 days of receipt of the earlier decision. When dealing with a refusal, there will be many strategies available to eventually obtain registration. If there are earlier similar marks, you may still be able to argue distinctiveness and the examiner on appeal may be more open to such arguments. Co-existence agreements may also be an option. If identical marks are a barrier, there are more and more tools to deal with bad faith parties to remove these. Where your mark falls into a restricted category, there may be some alterations that can be considered and get you through to registration.
Upon preliminary approval of a trademark application, any interested party may oppose an application prior to registration during the 3 month opposition period. Trademark monitoring is recommended to give brand owners an opportunity to oppose problematic marks prior to registration. After registration, it is still possible to remove a mark through an invalidation proceeding.
Is there any protection without prior registration in China?
Some protection may be available, but it is usually an uphill battle so early registration will save a lot of time, effort, and cost. With that said, unregistered trademarks may find options through the Trademark Law and Anti-Unfair Competition Law arguing bad faith or certain prior reputation. Well-known status may be recognized on a case-by-case basis and is a very powerful tool against third party filings. However, such status requires a large amount of evidence and most brand owners will find it difficult to attain.
What are the various options for trademark enforcement?
We will break enforcement routes into 3 categories: administrative action, judicial action, and alternative options.
First, administrative action may be filed with a variety of administrative offices and the best strategies will utilize a few of these options. The Customs office is an important stop for most trademark owners where they can record their trademark rights and have Customs officials monitoring for infringing goods in their normal inspections or they may request Customs to take action on specific infringing shipments. You can read more about Customs action here. Another important office is the Administration for Market Regulation where officials may conduct a raid upon request, collect evidence of infringement, and issue injunctions and fines. Other government offices may be available to take action against infringers depending on the industry and/or situation at hand.
Second, judicial action may be filed with a relevant people’s court. Usually cases will be initially filed with an Intermediate Court in one of the provinces or one of the 4 IP Courts throughout the country. Moreover, some administrative cases may see a second appeal before a people’s court. Judicial action may take the form of a trademark infringement case, unfair competition case, or sometimes a copyright infringement case. In some situations, you may be looking at a breach of contract case or even a criminal case as well. Generally speaking these claims should be made in separate litigation cases. In addition to injunction, damages will be available including attorney’s fees - such compensation is not available in administrative cases.
Lastly, we are left with the spillover category of “alternative options”. Besides the traditional administrative or judicial actions available, there may be some quick steps that can be taken to address problems relating to your trademark. These “alternative options” may be taken before or simultaneous to the traditional actions, but remember that it is important to not rush to take these quicker steps and be sure to secure evidence that will still give you the option to file administrative or judicial action later if necessary. One of the most important “alternative options” that we will always looks to is an e-commerce platform takedown where a complaint is filed and the platform owner (Alibaba, Tao Bao, Redbook, JD, etc) can decide whether to remove infringing sales pages. This is a quick and low cost way to stop online i infringement. Another common option is a cease and desist letter, however, make sure your letter is in Chinese and comes from a Chinese attorney/firm to ensure that the recipient takes it more seriously. Note that either of these options will result in the infringer becoming aware that someone is watching them - so if there is concern that the infringer may take steps to better hide their illicit activities, it is important to preserve evidence in advance to be used in action later. Other creative “alternative options’ are often considered and may be suggested by counsel familiar with the Chinese market.
Can trademarks be protected through other IP rights?
Yes, you may be able to protect you trademarks through copyright. Where a logo is quite simple, this may be difficult, but for more distinctive designs and logos, a copyright claim should be included in your enforcement strategy. Your trademarks may also be protected from domain name registration or even from use in entity names depending on the circumstances.
Can I realistically address and combat bad-faith filings in China?
Yes, bad faith filers are being taken down regularly in China. China is continuing to add protections to deter and fight bad faith filings, however, the truth is that the problem is still quite serious in the country. Trademark squatters remain a concern, as well as parties riding on the good-will developed by foreign brand owners. The most important way to stave off bad faith filers is to file your own marks, including product names, as soon as possible and to cover as many classes and subclasses you can. If dealing with a bad faith filer who filed early and is blocking your own filings, some steps to consider are negotiation, non-use cancellation, and invalidation. While many brand owners may be hesitant to negotiate with a trademark squatter, discussions to purchase the mark may be able to provide the quickest route to registering your brand in China and should be considered. However, knowledge of the market and common pitfalls is important to develop the best negotiation strategy. Non-use cancellation is a pretty low cost option, and many trademark squatters have difficulty proving use but where that option falls flat, invalidation action arguing bad faith and prior right may be needed. Depending on the circumstances, an unfair competition lawsuit may also be possible, though the costs will be higher.