By Fernanda Zaragoza Benitez LL.M, Of Counsel HSS IPM with valuable contributions from Yibing Zhou, Of Counsel, Global Law Office (“GLO”).
The internationalization of China’s market economy during the last few years has made it one of the most promising countries to invest in. China’s economic growth and development make it an attractive market for foreign marketers and intellectual property plays a crucial role in this. However, special attention must be paid to trademark applications in China due to the peculiarities of its system and the practice of the China National Intellectual Property Administration (“CNIPA”).
What are the particularities of the Chinese trademark registration system?
While we are not Chinese lawyers, HSS IPM has gained practical experience in Chinese filings while working with our trusted local counsel. We get a lot of Chinese IP-related inquiries from our clients, so we have prepared this handy summary of key issues:
- “First-to-File” System. If a confusingly similar mark has already been registered in China, you may not use your own mark or target brand in the country. Filing a trademark application in China as soon as possible is strongly advised to avoid a competitor or others obtaining trademark protection for your brand first.
- No evidence of use is required to get a registration. If the trademark has not been used for any three consecutive years following registration, the trademark can be canceled by any third party. This requirement could potentially be changed according to the recent draft amendment of the PRC Trademark Law. According to the draft, trademark registrants need to present their use of their registered trademarks or to justify their nonuse of the trademarks every 5 years after registration. However, the new amendment is yet to be finalized.
- If you are manufacturing but not selling in China, trademark protection is recommended. Foreign companies often overlook the fact that they should also obtain trademark protection if their products are manufactured in China. Unfortunately, it is not uncommon that a third party (sometimes the manufacturer) files your trademarks in bad faith in China and then claims infringement of your unregistered brands.
- One year from filing the application to getting the registration certificate. Assuming a smooth application, the expected timelines are around 9 months for examination, 3 months of publication period for oppositions and 1-2 months for obtaining the registration certificate. Any bumps in the road will extend the timeline. According to the recent draft amendment of the PRC Trademark Law, the opposition publication term could potentially be shortened to 2 months. As a matter of practice, the substantive examination is getting faster. In recent cases, GLO’s Chinese trademark applications took only 4 months or so to receive CNIPA’s examination decision after filing.
- China is also a member state of the Madrid Protocol. Thus, the extension of international registration of a trademark via the Madrid System is possible for this country.
- Scope of protection. Hong Kong, Macao, and Taiwan will not be protected under a Chinese trademark.
- Trademark in Chinese characters. Since the majority of the Chinese population does not speak English, it is important to obtain trademark protection for the Chinese version of a western trademark by way of translation, transliteration or by choosing a different name for the Chinese market. A trademark in roman characters does not automatically protect the trademark against the use or registration of the same or similar trademark written in Chinese. For most foreign trademarks, there is no unique Chinese translation/name. For business purposes, foreign trademark owners are recommended to pay attention to the Chinese translation/name of their brand or trademark that has been commonly known in the Chinese market, before filing registration of their trademark in Chinese characters and marketing with the name.
Other important aspects of the Chinese trademark system that you should know about
- On January 13, 2023, CNIPA published draft amendments to the PRC Trademark Law for public comment. This Draft marks the fifth time that the PRC Trademark Law has been up for revision since its adoption in 1982. Therefore, some of the above-mentioned particularities might be changed according to the recent draft amendment as noted above.
- Since January 1, 2022, CNIPA does not issue paper trademark certificates. Instead, CNIPA issues electronic certificates only.
- Clearance search is recommended before filing. A search could help to reveal if there are any conflicting trademarks and evaluate the chances of achieving registration.
- Classification of Goods and Services. China has adopted the International Nice Classification, but, in addition to that, the Chinese Trademark system has sub-classes, which is a unique classification. Each class is divided into several sub-classes, and generally, goods/services are considered similar in the same sub-classes.
- There are two routes to obtaining a Chinese trademark registration (national and international registration). The procedural rules of the two routes are different; however, the examination rules are the same. Through the Madrid system, the World Intellectual Property Organization in Geneva (“WIPO”) is only responsible for document circulation. After the Bureau sends the Chinese designation request to CNIPA, CNIPA examiners will categorize the designated goods/services of the international registration according to the Chinese Classification and then conduct substantive examination according to the PRC laws as they do for national trademark applications.
- A trademark logo might be protectable by trademark law, copyright law, and patent law. However, the scopes of protection under different laws are different. Also, since copyright recordal (not necessary for copyright protection) and design patent registration (necessary for patent protection) do not require substantive examination, the copyright and design patent rights are venerable.
HSS IPM supports our clients worldwide with their IP matters across various jurisdictions, including China. Our strong network of high-quality local counsel, such as Yibing Zhou from GLO, means that clients often rely on HSS IPM for multi-territory matters.