At a glance: trademark registration and use in China

Registration and use

Who may apply for registration?

Any individual or registered corporate entity can apply. Joint applicants are also allowed.

What may and may not be protected and registered as a trademark?

Article 8 of the Trademark Law provides that any visual sign capable of distinguishing the source of goods or services, including any word, design, letter, number, three-dimensional symbol, colour combination, sound, or a combination of the above, may be registered as a trademark. Distinctive trade dress and slogans are also registrable.

Article 10 of the Trademark Law specifies what cannot be used as trademarks:

• Those identical to or similar to the state name, national flag, national emblem, national anthem, military flag, army emblem, military songs, medals, or decorations of the People's Republic of China;

• Those identical with the names and signs of central state organs, names of the specific locations thereof, or those identical with the names or device of landmark buildings;

• Those identical with or similar to the state names, national flags, national emblems, or military flags of foreign countries, unless permitted by the government of that country;

• Those identical with or similar to the names, flags, or emblems of international inter-governmental organizations, unless permitted by the organization concerned or is unlikely to mislead the public;

• Those identical with or similar to an official sign or inspection seal that indicates control and guarantee, unless authorized;

• Those identical with or similar to the names or signs of the Red Cross or the Red Crescent;

• Those of discrimination against any ethnicity;

• Those of fraud that may easily mislead the public in the characteristics such as the quality of goods or place of production;

• Those detrimental to socialist morals or customs or having other unhealthy influences.

In addition, the name of any administrative division in China at or above the county level or the name of any foreign place may not be used as a trademark. 

Article 11 specifies what cannot be registered as a trademark initially but may be registered as a trademark if it has acquired distinctiveness through use:

• marks that only bear the generic names, devices or model numbers of the goods;
• marks that simply indicate the quality, main raw materials, function, use, weight, quantity or other features of the goods; and
• marks that lack distinctive characteristics.

Article 12 excludes trademark protection for three-dimensional marks if the marks are functional.

Article 16.1 states that to avoid misleading the public a mark containing a geographical indication where the goods or services do not originate from that region cannot be registered.

At the time of writing, scent marks, motion marks, hologram marks, taste marks and touch marks are not registrable in China.

Can trademark rights be established without registration?

China is a registration-based or first-to-file trademark jurisdiction. Generally, an exclusive right to use a trademark will vest only upon registration. However, the real owner of an unregistered mark may be able to oppose or invalidate a trademark registered by a squatter by invoking grounds such as bad faith, prior use, well-known status, prior business relationships, etc. In addition, article 59(3) of The Trademark Law provides a defence for prior users of unregistered trademarks against potential claims of infringement.

Other laws such as the Anti-Unfair Competition Law and the Copyright Law may also protect unregistered marks if the Trademark law isn’t applicable.

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Foreign trademarks that have not been used, exposed or registered in China do not enjoy trademark protection.

However, unregistered foreign trademarks may be recognised as ‘well-known’ trademarks by the China National Intellectual Property Administration (CNIPA) and the courts in China on a case-by-case basis. Article 14 of the Trademark Law provides the factors one must consider for a mark to be recognised as ‘well-known’. They are:

• how popular the trademark is in its trading area(s);
• the duration the trademark has been in use;
• the duration, extent and geographical range of the trademark’s advertising and publicity;
• the records on the protection of the trademark as a well-known trademark; and
• other reasons for the reputation of the trademark.

When determining whether the mark is a famous foreign trademark, it is worth noting that Chinese consumers tend to remember Chinese character marks better than marks in other alphabets.

What are the benefits of registration?

Specialised intellectual property (IP) courts in China hear trademark cases and a trademark registration certificate is prima facie evidence of its contents. Therefore, a registration certificate can be vital for trademark actions or infringement proceedings. In addition, registered trademarks may be recorded with China’s General Administration of Customs to prevent persons from importing or exporting illegal goods to and from China. Businesses may also need to provide a trademark registration certificate to other government regulatory authorities and e-commerce platforms for their continued operations.

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

Documents needed to file a trademark application include:

• the trademark;
• the name and address of the applicant;
• a copy of the identity document of the applicant (for foreign entities, for example, a copy of their Certificate of Good Standing will suffice; for foreign individuals, a copy of their passport will suffice);
• a description of the goods or services; and
• a priority claim and supporting documents (if applicable).

A power of attorney signed with the local Chinese trademark agent is also required for foreign citizen or entity that does not have a place of business in China. Note that any documents or information not written in Chinese need to be translated into Chinese.

Since 1 January 2022, CNIPA no longer issues hard copies of Registration Certificates.

It is important to refer to the Chinese Classification Guide when drafting the description of wares and services. Directly translating the description from the trademark applications or registrations in your home country may not be the best option.

Trademark clearance searches are recommended but not required prior to the filing.

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

Currently, examiners take approximately seven months to examine an application. In addition, there is a three-month publication period. More time may be required if the examiner issues a refusal or amendment notification or if anyone files an opposition against the application.

The registration will formally come into effect at the end of the publication period provided no oppositions have been filed.

The official fee for filing a trademark application under one class is 300 yuan for paper applications and 270 yuan if filed online. Professional fees vary widely based on the engaged firm.

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

China has developed a sub-classification system based on the Nice Classification. In China, each class of goods or services is further divided into sub-classes that follow a set of cross-referencing rules to determine similarities between goods or services in different classes and sub-classes.

Though multi-class applications can be filed, they cost as much as multiple single-class applications.

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The CNIPA conducts a formal and substantive review of applications based on the rules in the Trademark Review and Examination Manual. In summary, once an applicant has filed all the required application documents and paid the requisite fee, the CNIPA will accept the application and issue an Acceptance Notice before proceeding to a substantive examination. During the substantive examination phase, the CNIPA may issue an Amendment Notification requiring amendments to the application or a Refusal Notification. At this stage, trademark applications are examined for potential conflicts against prior trademark applications and registrations as well as other absolute and relative grounds of refusals under the Trademark Law. If the amendment has been made and accepted or if the refusals are overcome, the application will be published for three months followed by registration provided no oppositions are filed.

The primary grounds for refusals are prior similar marks and confusing similarity as well as the Amendment Notification issued due to the use of non-standard terms according to the Chinese Classification Guide.

Once the trademark has been filed, no amendment to the description of goods or services can be made, unless required by the CNIPA.

Consent letters may be used to overcome refusals based on confusing similarity with a prior mark. Apart from the practical difficulties in obtaining consent, it is important to remember that the Trademark Office will consider the public interest and may refuse to accept a consent letter if the marks are identical.

Applicants may respond to rejections by filing an appeal.

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use or proof of use of a mark is not a prerequisite for trademark registration in China.

Foreign registrations may be granted priority rights provided a trademark application is filed in China within six months of applying outside China and when both applications cover the same trademark and identical goods or services. Priority claims must be included by applicants in their Chinese trademark application with priority documents submitted to CNIPA.

Registered trademarks should be used in China within three years of their registration to avoid cancellation for non-use. Any person can file a non-use cancellation application in China after three years have lapsed from the date of registration of a trademark.

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Under the Regulations, a user of a registered trademark could indicate trademark registration by marking it with the phrase ‘注册商标’ (meaning Registered Trademark) or with trademark registration symbols, such as ‘ ㊟’ or ‘®' on the upper right or lower right corner of the trademark.  

Marking is an entitlement, not a legal obligation. Marking demonstrates the registrant’s exclusive right to use the registered mark and may help prevent infringement.

Lastly, a trademark registration and the use of such trademark is mandatory for the sales of certain products, such as tobacco and e-cigarettes. 

Is there an appeal process if the application is denied?

If a trademark application is denied, an appeal can be filed to the body previously known as the Trademark Review and Adjudication Board (TRAB), which has since been merged into the CNIPA. If an applicant is dissatisfied with the CNIPA’s decision, an administrative proceeding can be filed before an IP court. The IP Court’s ruling can be further challenged before the High People’s Court. Lastly, and if applicable, an application for retrial may be filed before the High People’s Court or the Supreme People’s Court.

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Trademark opposition proceedings: A trademark application can be opposed during the three-month publication window by anyone based on absolute grounds or by a prior rights holder or an interested party based on relative grounds, with limited exceptions.

Trademark invalidation proceedings: A trademark invalidation application can be filed within five years of registration by anyone based on absolute grounds if the mark was acquired by fraud or illicit means, and may also be invalidated by a prior rights holder or an interested party based on relative grounds, with limited exceptions.

Trademark non-use cancellation proceedings: A trademark non-use cancellation application can be filed by anyone based on the non-use of a registered trademark for three consecutive years from the date of its registration.

The three proceedings mentioned above must be filed first with the CNIPA.

Under article 4 of the Trademark Law, an application in bad faith lacking an intention to use is an absolute ground for opposing or invalidating a trademark.

The official fee for opposition or cancellation proceedings before the CNIPA is 500 yuan for paper filings and 450 yuan for e-filings. The official fee charged for invalidation proceedings before the CNIPA is 750 yuan for paper filings and 675 yuan for e-filings. Professional fees vary widely based on the engaged firm.

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

Trademark registrations remain in effect for 10 years from the date of registration and they can be renewed. Evidence of trademark use is not a prerequisite for renewal but is required for maintaining the registration in the event of a non-use cancellation being filed.

What is the procedure for surrendering a trademark registration?

The registrant must file an application to surrender or voluntarily withdraw the trademark registration, either in part or in its entirety. In addition, the registrant must return the original Registration Certificate to the CNIPA or provide an explanation if unable to do so.

The validity of the registered trademark, either in part or as a whole, will end on the date when the CNIPA received the surrender or voluntary withdrawal application.

Can trademarks be protected under other IP rights?

Trademarks may also be subject to protection as copyrights under the Copyright Law or as design patents under Patent Law. Article 6 of the Anti-Unfair Competition Law may also provide protection.

What regime governs the protection of trademarks online and domain names?

The same laws apply to trademark infringement on the internet. However, to combat online infringement, the brand owner should implement an active infringement monitoring routine, consider conducting on-site investigations on potential infringers, and collect infringing evidence in compliance with the rules of evidence in China such as conducting a notarised purchase. E-commerce platforms in China are required to establish rules on IP protection and brand owners can utilise the notice and take-down rules implemented by e-commerce platforms to combat online infringements. Brand owners should also pay attention to the increasingly popular trend of live streaming e-commerce as it poses unique challenges for enforcement.

For domain names, the China ccTLD Dispute Resolution Policy is the primary legal protection for two ccTLDs domain names: ‘.CN’; and ‘.中国’ (China in Chinese). There are three procedures for resolving domain name disputes:

• If a domain name has been registered for less than three years in China, the infringed party can file an administrative complaint to one of the Dispute Resolution Service Providers designated by the China Internet Network Information Center.
• Either party involved in a dispute can initiate civil litigation before a Chinese court at any time.
• Either party involved in a dispute can apply for arbitration to a Chinese arbitration institution at any time.