How to Perform a Flawless Registration of Trademark in China

Trademark has a value not only to the owner due to its distinctiveness but also to customers who associate this trademark to a specific product or service. Moreover, if a foreign company wants to enter into a licensing agreement with a Chinese distributor, the foreign firm has to register trademark in China first.

Are there any benefits from a pre-filing use of the trademark in China?

The benefits from a pre-filing use are minimal since rights are obtained via registration. However, the applicant can use this to demonstrate the mark’s distinctiveness and overcome opposition on the ground of non-distinctiveness.

Chinese Character Trademarks

In China, the Chinese language version of your brand can be just as important as the English language version. If you don’t have a Chinese version of your trademark, you are strongly advised to create one and register it. Otherwise, the local market will create one for you and someone else might register it. It should be noted that the CTMO considers foreign equivalents of marks during the examination process. Chinese written language is comprised of characters, each of which not only has a sound, but also a meaning. There is both a “traditional” set of Chinese characters and a modern, more simplified, set of characters having fewer strokes. China is currently using the modern version. So, it is advised to seek assistance from a trademark attorney for registering trademark in China.

Perform a Flawless China Trademark Search

When considering a new trademark, perform online China trademark search to determine whether others use that mark, registered that mark, or applied for a registration. Before you settle on a name, logo, or domain name, make sure it is not already trademarked. Check for the exact name you want to use, as well as similar names.

What rights does trademark registration provide?

A trademark not only gives the trademark owner the exclusive right to use the mark but also allows the owner to prevent others from using a similar mark that can be confusing for the general public. A trademarked name marks all of your products and services as yours and no one else’s and can also protect you from counterfeit products. In principle, a trademark registration in China will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder, for example, in case of litigation.

Two important requirements after your trademark is registered in China

First: Keep a close eye on the possible infringement of your trademark. Closely monitor third party applications for similar trademarks.

Second: Separately register the trademark with China customs. Unless your trademark is registered in China customs, they will not seize allegedly counterfeit products under your trademark.

Instead of doing anything by yourself, it is always safe to seek advice from the expert China trademark lawyers. Specialist trademark attorneys have better resources and efficiency to perform a flawless China trademark search. It will also likely cost you less to pay a professional to do a search than it is to defend an infringement that may result in an expensive legal battle.

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What Next After Registering Trademark in China?

China’s trademark regime follows a first-to-file system and so does not recognize international trademarks if they are not registered in the mainland. Once a trademark right is granted in China, the trademark owner enjoys the exclusive right to use the sign in relation to the goods or services covered by the trademark, and may prohibit others from using it without prior consent. Like many other countries, China uses NICE classification.

However, a key difference in Chinese trademark practice is subclasses. Chinese Classification Table for Similar Goods and Services (Classification Table) is the main criteria that examiners in China adopt in determining whether goods/services are similar. The Classification Table is mainly based on NICE Classification, but also includes nearly 2,000 items of goods and services that are commonly used in China but not included in the NICE Classification.

Foreign applicants without residency or place of business in China are required to submit trademark applications through a local Chinese trademark agent who will deal directly with the CTMO. The China Trademark Office, or CTMO has issued requirements that must be met in order to approve your trademark application in China. Before you begin the process to register your mark, be sure that you have met the following requirements to obtain a trademark registration in China:

  • The mark must be available to use.
  • The mark must be easily differentiated from other registered trademarks.
  • The mark cannot be descriptive of the goods or services provided.
  • The mark should have a positive connotation.

Cancellation on the basis of non-use

The authority of mainland China stipulated that a registered trademark, including a trademark for goods, a service mark, a collective mark and a certification mark, refers to a trademark that has been approved and registered by the Trademark Office. Chinese trademark law states that if in the three years following the mark’s registration the mark has not been used for a continuous period of at least three years without due cause, it might be subject to cancellation proceedings.

It can take years of painstaking effort for a trademark owner to develop a strong brand. A trademark owner, however, must be vigilant in protecting the brand or the goodwill associated with the brand can be lost.

Two important requirements after your trademark is registered in China

First: Keep a close eye on the possible infringement of your trademark. Closely monitor third party applications for similar trademarks.

Second: Separately register the trademark with China customs. Unless your trademark is registered in China customs, they will not seize allegedly counterfeit products under your trademark.

Nevertheless, Chinese trademark law provides foreign companies in particular with two essential legal remedies to take action against an unlawful trademark application in China. Registered trademarks shall be so distinctive as to be distinguishable and shall not conflict with any prior right acquired by another person. trademarks mean signs which are controlled by organisations capable of supervising certain goods or services and used by entities or individual persons outside the organization for their goods or services to certify the origin, material, mode of manufacture, quality or other characteristics of the goods or services.

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