6 EASY Steps to Register Your Trademark in China
Updated: May 15, 2020
A trademark is how your brand is recognized in China, and a key asset of your business in the Chinese market - even before the official market entry.
Up until now, many still hold the assumption that their registered or used trademark in their own country or overseas is automatically protected in China.
THIS IS NOT THE CASE!
China follows a “first-to-file” instead of a “first-to-use” system. Therefore, if you are interested in entering China to manufacture, distribute, develop or sell your goods or services, you are highly recommended having your trademark registered as early as possible.
This blog will walk you through 6 simple but crucial steps on how a foreign company can register its trademark in China. On top of this, you can learn about the latest Trademark Office’s administrative reforms and the detailed process of trademark registration.
It is also worthy to mention that when a company without a business office in China applies for trademark registration and handles other trademark matters, it shall appoint a certified trademark agency to take care of the full process under Trademark Office of National Intellectual Property Administration (TONIPA).
If this is the case with your business, it still helps to learn about all these processes and gain the full picture. Here we go!
1. Conduct a comprehensive search
An advanced check and clearance of your proposed trademark are necessary. Make sure no other identical or similar marks to your proposed ones have been registered/owned by others.
For this step, it is pivotal to use the right search database and to find the right data on similar registered trademarks.
An experienced IP agency can be of great assistance here. However, if you prefer to “DIY” your search, you can take a look at the sources below:
● Identical or similar trademark from here.
● Others may have already registered a similar mark and assessing whether your mark meets the requirements for registration from here.
2. Prepare the application documents
After confirming the significant opportunity for your proposed trademark to be successfully registered in China, you will need to start arranging all the needed materials for your application.
As a business registered outside China, you shall appoint a certified trademark agency to help with filling out the trademark registration form in Chinese and collecting all supporting documentation. An application can be filed either online or on-site. Below are the materials you shall have ready in advance:
● Your personal and company information
Applicant’s official name, address (both in original language and Chinese), copy of your passport and company’s certificate of incorporation.
● Proposed trademark information
Copy of printed digital version of trademark specimen with size between 5×5 cm and 10×10 cm; description of the proposed trademark; original trademark name and its appropriate Chinese transliterations (shall pay sufficient attention to its Chinese version).
● The range of goods or services to declare
Description of the goods or services; identification of the class(es) of goods or services and the auxiliary categories.
● Power of Attorney
Information of your appointed approved agency in China and Power of Attorney with the company’s original seal.
3. File the proposed trademark application
With all of the above-mentioned documents being prepared, your appointed agency will file the trademark application on your behalf. The agency can submit it directly at the trademark office, by post/courier service, or through an online application system.
You could check the trademark application status using the registration number or based on the applicant’s name, declared class and registration number here.
If nothing major happens, the average application period from filing to final approval is around 11 months. It is a good idea to keep in close touch with your agency to monitor your application’s process and status, and the agency is responsible to report back when encountering any obstacles.
4. Wait for a thoroughgoing examination process
After receiving all application documents, the Trademark Office will first initiate the so-called “formality examination process” which normally lasts around 3 months. During this period, the Trademark Office will check whether the application procedures, documents, the declared goods or services’ classes and categories, as well as the graphics and wording of the proposed trademark, meet basic requirements. If the applied trademark has passed the examination and the application fee is fully paid, a notice of acceptance will be issued.
If it is necessary to make corrections after the examination, the Trademark Office will notify your appointed agency to inform you to make corrections. The Trademark Office is vigorously promoting the reform of trademark registration facilitation at present, so the time for issuing the notification of acceptance has been shortened to potentially one month.
In the next phase, the Trademark Office will start the “substantial examination process” lasting approximately 9 months. During this period, if the trademark examiner finds any issue with the application, he/she will issue a rejection notice with the reasons for the denial.
If this happens, you may request a review from the Trademark Review and Adjudication Board of National Intellectual Property Administration within 15 days from the date of receiving the rejection notice. Often, your appointed agency will help you with the review application together with other needed materials at an additional charge.
5. Anticipate potential oppositions during the publication period
If your application has successfully passed the examination phase, the Trademark Office will publish your trademark in the Chinese Trademark Gazette for a 3-month opposition, during which any third parties can oppose it.
The scope of trademark opposition is very wide. Some typical scenarios include but are not limited to:
● a proposed trademark is the same or similar to someone’s earlier application
● proposed trademark violates the prohibitory provisions of the Trademark Law or the applicant is not eligible.
In case of an opposition, you can still apply for a review from the Trademark Review and Adjudication Board of National Intellectual Property Administration. The review period normally lasts 9 months. However, in some cases, it takes even over 1 year.
6. Receive the approval and the certificate of registration
If no opposition is filed or the opposition has been denied, we want to congratulate you! Your proposed trademark will be approved of registration and the certificate of registration will be issued and delivered to your appointed agency, who will inform you about the great news.
From this on, you are entitled to your exclusive trademark right to prevent any infringements or violations in China. This is one solid intellectual property protection step for your entrance into the Chinese market.
Download a free checklist of your trademark registration process in China:
Disclaimer: Hohot Consulting provides specialized legal consultation in terms of entering the Chinese market. However, this article does not create an attorney-client relationship. Whilst we endeavour to keep the information up to date and correct, Hohot Consulting makes no representations or warranties about the completeness, accuracy, reliability or availability with respect to the information. This article only provides legal information and should not be treated as legal advice. You should consult an attorney before you act on this information.