It is important to note that China adopts the ‘first-to-file’ system and generally does not recognise unregistered trade mark rights. It is very important to register your trade mark in China before entering into the market so as to diminish the risk of your trade mark being hijacked. Even if your company only manufactures products in China for export, you should still register your trade mark.
The term of protection for trade mark registration is perpetual subject to the payment of renewal fees every ten years.
Chinese consumers often find that a Chinese name of a foreign trade mark is much easier to pronounce and remember. A Chinese version of a foreign mark can be a transliteration or a translation, or the company can develop a distinctive Chinese mark. In addition, IP hijacking extends to Chinese language versions of others’ marks. We therefore highly recommend companies register a Chinese version of their foreign language marks.
A trade mark can be registered through the ‘national’ or ‘international’ system and can only be protected in China once it has been registered.
Foreign applicants without residency or place of business in China are required to submit trade mark applications through a local Chinese trade mark agent who will deal directly with the China Trade Mark Office (CTMO). A list of the qualified trade mark agents can be found at the CTMO’s official website External Link.
China uses the International Classification of Goods and Services under the Nice Agreement. A separate application must be filed for each trade mark class in which the applicant wishes to obtain protection. The cost for registration is 1,000 RMB (excluding lawyer fees) for one class, and includes 10 items of goods/services. An extra 100 RMB is charged per additional item.
trademark registration in China
Trade marks registered in European countries are not protected in China unless they have also been registered in China. The international registration system is available under the Madrid Protocol through the World Intellectual Property Organization (WIPO). China and all Member States of the European Union are party to the Madrid Protocol. (NB. Malta is not part of the Madrid Protocol, however they can extend the application through the Office for Harmonization in the Internal Markets (OHIM). A full list of members of the Madrid Protocol can be found on WIPO’s official website External Link.
Under the Madrid Protocol, the application for extension to China is based either on the trade mark application or registration. Your trade mark agent will file your applications with the national trade mark office in the home country of the applicant application or registration, which then passes the application to WIPO. The international application should be filed in English, French or Spanish. Upon receipt of the application, WIPO will conduct a formality examination and will notify all Madrid Protocol members in which the applicant wishes to obtain protection. If, within eighteen months from the notification made by WIPO to China, no objection is made; your trade mark is registered. But please note: if there are objections concerning the registration of your trade mark you will need to mandate a local Chinese trade mark agent to handle the case. Renewals and modifications will also be handled through the international system.
The national Chinese trade mark registration and the international trade mark registration are valid for ten years.
Comparisons
If you use the international system, you can make your application in English, French or Spanish, however, if you follow the national system the application can only be made in Chinese. As a foreign company, you will have to use a Chinese trade mark attorney, and have a Chinese company name and address.
The basic fee for the international system covers more than one country at the same time and up to three classes of goods or services. Under the Chinese national system a separate application must be filled per class.
In theory there is no difference between the international and national trade mark registration, however, for practical reasons you may wish to apply through the national system in China. By doing so you will also obtain a Chinese language certificate which can be used when undertaking any enforcement action in China and will help speed up proceedings when dealing with local authorities.
If you use the international system you will need to request a Chinese language certificate from the CTMO to certify an international trade mark, which can take up to three months. Both the Chinese and the European trade mark registration systems use the International Classification of Goods and Services under the Nice Agreement, however Chinese classes also include sub-classes which are not widely used in Europe.
The CTMO applies different criteria for examining specifications of goods and services for national and international applications. Broader specifications are acceptable for international applications while for national applications, the specifications need to be clear and specific.
If an application is filed for a trade mark using the national system, the Trade mark Office will automatically issue a trade mark certificate upon the registration of the mark. The registrant of an international trade mark which extends to China can also request the Chinese Trade mark Office to issue a notice certifying the international registration. The trade mark certificate is important evidence in infringement actions and therefore should be properly kept.
The China IPR SME Helpdesk is a European Commission funded project that provides free, practical, business advice relating to China IPR to European SMEs. To learn about any aspect of intellectual property rights in China, visit our online portal External Link For free expert advice on China IPR for your business, e-mail China IPR SME Helpdesk with your questions. You will receive a reply from one of the Helpdesk experts within seven working days. The China IPR SME Helpdesk is jointly implemented by Development Solutions and the European Union Chamber of Commerce in China.