If you want to protect your brand in China, you need to have a trademark registered in China.
Registering a trademark can also help prevent counterfeiting. Sellers of counterfeit merchandise use brand names to promote their phony products. By protecting your brand name, counterfeiters cannot use it to sell fake merchandise posing as your product. Once your trademark is registered, it will be easier to fight those using your name to sell their illegal goods.
China is using a first-to-file trademark system, which means that intellectual property rights go to the first party who registers the trademark, a process that requires no proof of use. Therefore, if you don’t want somebody else to register your trademark, you should do it yourself. In addition, many Chinese e-commerce websites require a registered trademark, and so do local distributors.
There is no doubt that registering a trademark as early as possible is the best way to protect your intellectual property in China. It’s time to get started. Now what do you need to do?
Intellectual property agent
Registering in China can be a complex process. For example, all documents submitted should be in Chinese. Therefore, 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, it may be best to first check if it is already registered in China. Trademark squatters are sometimes first to file, preventing brand owners from registering and using their hard-earned intellectual property.
If you find a third-party has already registered your trademark in China, you are in for a long petition process, which no business wants.
The background check will let you know where you stand and how to proceed.
Where to file
If your background check is clear, it’s time for the paperwork. China offers two ways to file for trademark registration, which should be discussed with your intellectual property expert.
The first way is to apply directly in China. Alternatively, it’s possible to extend an existing application or registration to China under the Madrid System for international registration of trademarks. This decision affects filing time, costs, and more, so it’s important to get professional advice.
Prepare trademark application
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. Yet, applications are examined in accordance with local laws, and there are some important differences, such as deciding whether to register your existing logo or brand and/or create a logo or brand in Chinese.
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 as well.
Another thing to consider is the different trademark classes and subclasses in China. 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. For broader protection, it is recommended to 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.
After you have decided, prepare all the required documents, and send them to your intellectual property attorney or agent.
Submit trademark application
Once all the documents are ready, submit the application as fast as possible. 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 to registration, and you will receive your certificate a few months later.
- Check to make sure the trademark is not already registered in China
- Decide if you want to apply directly or under the Madrid System
- Prepare application carefully
- Submit application and documents
- The Chinese IP authority reviews the application and decides whether you can proceed
- After the initial approval and 3-month opposition period, the process begins for trademark registration, which usually takes over a year
- Chinese authorities issue the trademark and you receive a Certificate of Registration, which usually takes a few more months.
Generally, protection starts on the date of trademark registration, rather than retroactive to the filing date. After this, trademarks are valid for 10 years and require renewal, although a trademark may be subject to cancellation if it has not been used within the continuous period of 3 years from the date of registration.
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.
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.
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