China is an attractive market. It has a population of around 1.4 billion and more than 900 million online users in 2020. Numerous businesses attempt to enter the Chinese market or have their products manufactured in China.
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To succeed in China, foreign companies must be aware of unique intellectual property laws and brand protection in China.
Even businesses that do not currently offer their products in China or do not look to sell in China in the foreseeable future should consider brand protection in China as an essential part of international intellectual property protection.
IP protection in China
Learning how to protect your brand in China is a crucial step on your way to growth and success.
As in other territories around the world, the first step to brand protection is to register trademarks. Apply for registration of your name, symbol, or logo as a trademark. If some of the brand’s products have unique, identifiable names, it may be worth registering each one as a separate trademark.
When applicable, it is essential to register other intellectual property rights, including copyrights, China patents, domain names, and generally all your IP (intellectual property) assets.
Trademark registration in China
Trademark registration means that you are the only one who can legally use your trademark in China. Therefore, the person who registers the trademark first gets all the rights to distribute and sell the products in China.
Trademark registration is proof of ownership, and many Chinese e-commerce channels require a registered trademark, and so do local distributors.
After registration in China, register your brand names and trademarks with online channels, such as marketplaces and social media platforms. If sellers abuse your trademark after registration, you can enforce your trademark rights online and offline.
Registering a trademark as early as possible is the best way to protect your intellectual property in China.
First-to-file trademark system
China uses a first-to-file trademark system rather than a first-to-use system. In a first-to-file system, intellectual property rights go to the first party who registers the trademark.
The China trademark application process does not require evidence of use. As a result, even a well-known brand can be denied IP protection because another party was the first to apply for it.
If you do not want another party to register your trademark, you should do it yourself.
Dangers of not protecting a brand in China
If you do not register your trademark in China, someone else will likely register it instead.
Trademark squatting is a common issue in China. Trademark squatters look to register third-party trademarks in bad faith. They may be third parties who file for multiple trademarks in the hope of making a profit later, or they may be a competitor who wants to gain an unfair advantage.
The first-to-file rule makes it possible since they do not need to prove use in order to register.
If someone registers your trademark, they may use this registration to manufacture and sell counterfeit products. They can also stop you from selling your products in the Chinese market and can even sue you in China for using the trademark.
Getting your brand back is usually a long and costly process. Sometimes it even requires paying compensation to counterfeiters for your trademark registration.
Another reason to register your trademark is that you cannot license your products to a distributor without a brand registered in China. Control your China intellectual property assets rather than let a distributor register them for you because they may use the first-to-file rule to benefit themselves.
Registering a trademark in China
China offers two ways to obtain a trademark:
(1) Registering a trademark with China National Intellectual Property Administration (CNIPA)
(2) Extending an existing application or registration to China under the Madrid Protocol
The latter, or international registration, is a cost-effective way to obtain protection in multiple countries under one application or adding additional countries after trademark registration. To utilize it, you must have a “basic mark” – an application or registration for the trademark in the home territory.
The decision between a China national mark or international registration affects various issues (such as filing time, costs, and more), so it is crucial to get professional advice from an intellectual property expert.
Intellectual property agent in China
Registering in China can be a complex process. For example, China only accepts documents in Chinese. Also, if you do not have a permanent address in China, you are required to use an approved agent.
It is highly recommended to file through a state-approved intellectual property agent or attorney. China has thousands of trademark agencies that can represent you in the registration process. Your agent or attorney can guide you on the best filing method for you in light of your intellectual property rights situation and business strategy.
Before you apply for a trademark, check if it is already registered in China. Trademark squatters or another third-party may have used the first-to-file system.
The background check will let you know where you stand and how to proceed.
Trademark application decisions
Generally speaking, as China has signed the Madrid System, its trademark registration requirements are similar to those found in other countries that have signed it. Y
et, applications are examined in accordance with local laws, and some crucial differences affect registration in China.
China has different trademark classes and subclasses. Make sure to register your trademark under all the necessary classes and subclasses to ensure it provides the protection you are seeking.
There are 45 classes, each with subclasses, and protection is generally limited to the specific subcategory rather than the class as a whole. You must select the categories that apply to your products or services.
The subclasses are listed in the Chinese Classification Manual, with the descriptions of goods and services. For broader protection, file so the application covers every product you sell or may intend to sell.
This prevents third parties from registering the same or similar trademark in a different subclass, excluding your brand from using its marks on certain goods and services or affecting its ability to enforce its intellectual property in China.
Issues with subclasses arise in different situations, such as when the description of an intranational registration is narrower because of differences in local laws, such as US trademark laws that require proof of use.
However, when international registrations are extended to China, the Chinese examiners translate and assign the subclass(es) at their sole discretion. With international registrations, there are often issues of insufficient coverage of subclasses.
Brand owners can assess the situation and decide whether additional direct filings in China are necessary. They can also ask CNIPA to rectify it later on.
As for descriptions, the trademark examination process in China favors standard descriptions of goods or services as specified in the Chinese Classification Manual.
Examiners are more likely to decline a CNIPA application with non-standard descriptions than an international registration, if it does not exceed the scope of the class of products or services.
If you do add non-standard descriptions in national trademarks, it is recommended to also include standard descriptions that can also cover the non-standard descriptions. This way, if the non-standard part is rejected, you can still have the standard protection that covers your intellectual property.
Under China’s trademark law, you can file a single-class or multi-class application. It is recommended to discuss the consequences of each decision under current practices in China.
Another thing to consider is that in China is the issue of Chinese characters. Decide whether to register your existing logo or brand and/or create a logo or brand in Chinese.
Protecting your trademark in Roman characters does not provide complete protection from trademark infringement in China. Trademarks in China are only recognized when used in the language in which they were registered.
For example, if you register your brand’s name in English and find someone using your brand name translated into Chinese, you will have no recourse without having registered the name in Chinese characters.
So find a combination of characters that have the desired meaning and are culturally appropriate. It can include a literal translation, phonetic translation, or a combination of the two.
After you have decided, it is time to prepare all the required documents and send them to your intellectual property attorney or agent.
From trademark application to registration
Once all the documents are ready, submit the application as quickly as you can. When registering a trademark, it is important to have the certificates in Chinese, even if the trademark is in English, as local websites do not accept English certificates. It takes time to obtain a trademark registration, so filing early becomes even more crucial.
After review, your trademark will be published, allowing three months for other parties to oppose registration. If there is no opposition, you can proceed and receive your certificate a few months later.
1. Check to make sure the trademark is not already registered in China.
2. Decide if you want to apply directly in China or under the Madrid System.
3. Prepare application carefully.
4. Submit application and documents.
5. The Chinese IP authority reviews the application and decides whether you can proceed.
6. After the initial approval and a 3-month opposition period, the process begins for trademark registration, which usually takes over a year.
7. Chinese authorities issue the trademark, and you receive a Certificate of Registration, which takes a few more months.
Generally, protection starts on the date of trademark registration. Trademarks are valid for 10 years and require renewal. A trademark may be subject to non-use cancellation.
China trademark use requirement allows cancellation if a trademark has not been used within the continuous period of 3 years from the date of registration. Anyone can initiate non-use cancellation, so it is important to keep evidence of use.
Remember that a trademark protects your intellectual property and makes enforcement easier and more cost-effective.
To further protect your trademark online, Wiser Market can monitor the enormous Chinese online market, including marketplaces and websites, detect trademark violations, and help your brand enforce its intellectual property rights.
Wiser online brand protection in China
Wiser Market is an online brand protection agency. We believe that being vigilant about IP protection means continuous monitoring of online channels and activity detection, followed by proactive enforcement to deter abusers and protect your brand and reputation.
We offer a digital brand protection strategy that includes 24/7/365 worldwide brand monitoring.
Our innovative system scans online channels, including Chinese websites, marketplaces, social commerce networks unique to China, and other platforms to detect IP infringements and enforce your trademark rights.
China is vast and unique, and it has an enormous counterfeiting market. Our team of experts has extensive knowledge and works closely with you to offer ways to protect your brand. Enforcement makes your trademark stronger and helps secure your brand and revenue in the booming online Chinese market.
With Wiser Market, your brand will have a comprehensive IP protection solution, allowing you to focus on growing your business.
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WiserTip: The trademark registration process in China usually takes over a year and sometimes even longer. Know that usually, the protection is effective starting the date of registration, rather than retroactive to the filing date. Only then can you enforce your trademark in China.
What are the benefits of registering a trademark in China?
Registering a trademark in China allows you to protect your brand in China and fight counterfeiters and unauthorized sellers, both online and offline.
Why is it so important to register a trademark in China?
China has a first-to-file trademark system. Therefore, whoever registers a trademark first gets exclusive rights for it in China.
Can international companies register trademarks in China?
Yes, foreign companies can register their trademark in China unless it is already registered by a third-party.
International companies and non-residents should seek the help of an intellectual property agent or agency.
Should I register a trademark in Chinese characters?
Yes, it is recommended to register your trademark in the original Latin characters as well as Chinese characters. Latin characters do not always protect the equivalent Chinese, so a third-party can go ahead and register the same trademark or a similar one in Chinese.
What is the subclass system in China?
Like many other countries, China adopted the NICE Classification of Goods and Services. China is unique because it also developed a subclass system in which each class has subclasses, and some subclasses are even further classified into different groups. For broader protection, it is recommended to file for as many subclasses as possible.
What is online brand protection?
Online brand protection services counter online threats and protect your intellectual property assets. Whether you wish to fight counterfeiting, protect your domain name, prevent trademark, copyright and brand infringements or combat gray market selling and knockoffs, use Wiser Market’s online brand protection strategy. Effective online brand protection protects your brand’s revenue, profitability, reputation, customer service and brand trust.
Disclaimer: This information is intended to help the reader gain a basic understanding of the current trademark situation in China. It is NOT designed to provide legal, business, or other relevant professional advice.