Registering trademarks internationally is smart.
Whether you are currently selling overseas, or are simply open to the possibility, covering your bases ahead of time is essential.
And, if you are one of the many U.S. companies planning to partner with Chinese retailers, manufacturers and subcontractors in the nea r-future, you DEFINITELY want international protection.
When IS the right time to register in China?
You may be surprised to hear us suggest 5+ years in advance of your plans to begin working abroad.
The China Trademark Registration Process Cheatsheet
We know – it sounds excessive, but it's not.
Unlike registering a trademark in the United States, registering a trademark in China holds some interesting distinctions. One of which is that China is a First to File country, while the U.S. is a First in Time, First in Right country.
In this article, we'll delve into this, among other factors, before looking at how you can best begin your international search right now.
1. Why Does Early Registration Matter?
As previously mentioned, Chinese trademark law operates on a First to File system. That means that whomever first FILES a particular trademark in a particular category gets the rights. Conversely, U.S. trademark law awards rights to whomever first USES a particular trademark in a particular region.
Why does this matter if your company is ONLY planning to manufacture in China?
Under current Chinese law, a company can "swoop in" and register your trademark (even though you were the first to use it). Once this happens, that company can legally stop your product from leaving the country by claiming trademark infringement.
High-end designer Minna Parikka provides a cautionary tale. The Finnish shoe designer's products are sold by some of the most prestigious fashion retailers in 25 different countries around the globe. Unfortunately, Parikka wasn't the first to register her trademark in China – she lost millions!
2. What Types of Trademarks Can Be Registered?
- Letters of the alphabet
- Combinations of colors
- Three-dimensional symbols
NOTE: Avoid the names of cities, countries and Chinese presidents.
3. What Are The Application Fees?
Expect to pay approximately $87 for each trademark application. Please consult the following price lists in both English and Chinese for more specific amounts:
4. What Are The Steps of Preparation?
1. Check the availability of your candidate.
2. Prepare all documents and application forms.
3. Sign all forms, before submitting to CTO.
4. A formality check is conducted by the SAIC.
(State Administration of Industry & Commerce of the People's Republic of China).
5. A notice of first approval is delivered by the SAIC.
6. A substantive examination of your chosen candidate is conducted.
7. The CTO formally approves and publishes the trademark.
8. You receive the approval certificate by postal mail.
Approximate Time Table: 9-24 months
5. Can We File Multiple-Class Applications?
According to recent amendments to the Chinese Trademark Law that entered into force on May 1, 2014, multiple-class applications are possible in China.
With that said, we don't recommend filing multiple-class applications for a couple of reasons:
1. They are more expensive
2. They are more likely to ensue delays and oppositions.
6. What Are The Minimum Filing Requirements?
For obtainment of the date of filing, your trademark application should contain:
- A representation of the trademark
- A list of goods and services
- The applicant (s) details
- Power of Attorney (Note: The signed Power of Attorney is sufficient. The copy of the form should be provided simultaneously with the filing of the trademark application in China).
Your trademark registration provided to the CTO should also contain:
- A copy of your company's certificate of incorporation
- A company name and address (both in English and Chinese)
- A Signature by your company's director (or the applicant)
- A printed or digital version of the proposed trademark
- A category of the proposed trad mark (can choose 10 subcategories)
7. How Long Will It Be Valid?
Trademarks in China are valid for 10 years from the date of registration.
- Requests to renew must be filed within 6 months prior dates of expiration.
- The Chinese government allows a grace period of 6 months.
- Trademarks may be renewed for 10-year-periods (with a signed POA).
8. What Are The Use Requirements?
Your trademark may be subject to cancellation if it has NOT been used within the continuous period of 3 years from the date of registration.
Don't Wait – Register in China Now
The most important thing to keep in mind?
It's NEVER to early to begin the trademark registration process in China. Doing so could end up saving your company a million hassles (and in some cases, a million dollars).
And it's never been easier to search internationally.
With NameCheck™ you can search UNLIMITED names in UNLIMITED regions for one flat rate. The technology-assisted search program can assess your mark candidate based on the 45 nice categories, local and international jurisdictions, and across a number of common law sources—all in a matter of seconds.