How to File a Trademark with the China National Intellectual Property Administration (CNIPA)

Table of Content

Introduction
Why is Trademark Registration so Important in China?
Who is Responsible for Trademark Registration in China?
What Type of Trademarks can be Registered in China?
Who is Eligible to Register a Trademark in China?
What You Need to Know the Nice Classification System in China
Securing Your Trademark in Chinese: A Crucial Step for Protection
What are the Most Recent Developments in Trademark Protection in China?
Applying for a Trademark in China
How can I Keep my Registration?
Monitoring your Application
Hiring a Local Representative or Lawyer
Conclusion

Introduction

In today's expanding global marketplace, cultivating a robust trademark is essential for drawing in customers and solidifying brand identity. China, boasting the status of the world's second-largest economy and experiencing phenomenal growth alongside its vast consumer market, offers unparalleled opportunities yet presents distinct challenges. Safeguarding your brand has become more critical than ever, particularly considering the repercussions businesses face for overlooking China's trademark regulations, as evidenced across various industries.

In this blog series, we'll delve into the intricacies of trademark filing in China, offering guidance based on the latest regulations and best practices as well as providing a comprehensive roadmap to navigating the process successfully. Whether you're an established corporation, a burgeoning startup, or an individual entrepreneur, understanding the ins and outs of trademark registration in China is crucial for safeguarding your intellectual property rights and securing your brand's identity in one of the world's largest markets.

Whether you're considering expanding your business into China or already operating within its borders, we'll address common questions and concerns, debunk myths, empowering you with the knowledge and resources necessary to make informed decisions and safeguard your brand's integrity.

Why is Trademark Registration so Important in China?

Many sectors have seen remarkable growth in China, attracting companies worldwide. However, entering this market comes with challenges, particularly concerning counterfeit goods, posing significant threats to genuine brands. Many foreign companies have overlooked the importance of trademark registration in China, assuming their home country registration suffices. However, China's legal system only recognizes trademarks registered within its jurisdiction. Even well-established brands have faced trademark infringement issues in China For instance, Muji, a Japanese fashion brand, fell victim to trademark infringement due to its failure to register trademarks for its products in China. A local copycat brand registered a similar trademark, leading to legal battles and hefty fines for Muji. In another intricate legal battle, Louis Vuitton confronted trademark infringement allegations from a Chinese company for the use of a similar trademark. Ultimately, the court sided with Louis Vuitton, noting that the infringing mark caused consumer confusion and acknowledging the trademark's "well-known" status in China. This underscores the vital significance of trademark registration in China. Without it, your brand remains exposed to counterfeiters, risking both reputation and revenue. Registration offers legal recognition and protection against infringement, securing exclusive rights to your brand identity.

Who is Responsible for Trademark Registration in China?

The main governmental entity overseeing trademark affairs in China is the China National Intellectual Property Administration (CNIPA).

What Type of Trademarks can be Registered in China?

A trademark is a distinctive sign used to identify the goods or services of a producer, enabling consumers to differentiate between products or services from different sources. It can be composed of various elements such as words, logos, shapes, colors, or sounds.

To be eligible for registration, a trademark must adhere to certain criteria:

It has to be legal: the trademark must conform to Chinese laws and regulations, avoiding any resemblance to state emblems, official flags, or symbols of national authorities. Additionally, it should steer clear of discriminatory or offensive content as per Chinese legal standards.
It has to be distinctive and non-functional: The trademark should be unique and memorable, not merely descriptive, or functional in nature. This uniqueness can be achieved through creative combinations of words, logos, designs, or other elements that set the trademark apart from others. Moreover, trademarks should not serve a purely functional purpose or describe the characteristics or features of the goods or services they represent. For example, trademarks that merely describe the product or its attributes, such as "fresh" for fruits or "fast" for delivery services, are typically considered non-distinctive and therefore ineligible for registration.
It has to be available for registration: China operates on a 'first-to-file' system, meaning the first applicant to file for registration generally receives rights over the trademark. The registration process can take up to 12 months or longer, emphasizing the importance of early registration to avoid the risk of it being "hijacked" by someone else. For international businesses, filing in China within six months of filing the same mark in Europe is also essential to maintain the original application or "priority" date.
Well- known status: In China, trademarks are protected once registered, except for those recognized as "well-known." These trademarks are widely known and respected by the public. To gain "well-known" status, trademark holders can apply during legal disputes, but there's no official list. Recognition depends on individual cases decided by authorities. Once acknowledged, owners enjoy benefits like higher damages and easier prevention of similar trademarks. However, achieving this status is tough, especially for foreign companies.

Who is Eligible to Register a Trademark in China?

Any individual, partnership, trade union, association, joint venture, or corporation with a registered address in China can independently register a trademark. Foreign entities or individuals seeking to register their trademarks in China have two possible pathways, the international route, or the national route. Each option carries its variations as well as benefits and drawbacks. For instance, foreign applicants without residency or foreign enterprises seeking trademark registration in China must engage a local trademark attorney for the process. Furthermore, national registration involves a shorter examination period up to 12 months, while the international filing system can take up to 18 months.

Option 1: National Route

The national route is the primary choice for foreign entities or individuals seeking trademark registration in China, involving direct filing with the China National Intellectual Property Administration (CNIPA).

Here's a breakdown of key aspects:

Filing an application:

Applicant needs to authorize a Chinese trademark agency, providing a power of attorney to act on their behalf. The power of attorney should be properly executed and notarized according to the requirements of Chinese law.
Any foreign entity or individual can file, but the name and address must be translated into Chinese.
A qualified Chinese agent must handle the filing, receiving all official documents.
The process involves an application date, followed by a publication period for opposition, and then registration if no opposition arises.

Goods and services:

Aligned with the Nice Classification scheme but registering in all relevant product and service classes and subclasses is crucial to ensuring comprehensive protection.
Trademark goods and services should generally align with the Nice Classification. The CNIPA examiner has discretion over accepting non-standard items.
Chinese language certificate is automatically provided with the registration, making it simpler to enforce trademark rights.

Examination period:

Typically takes around 12 months for the CNIPA to complete the process. CNIPA's encouragement in 2019 to shorten the trademark examination period from 8 to 6 months in 2019 actually led to a slight increase in trademark rejections!

Option 2: International Route

The international route entails filing the application with the World Intellectual Property Organization (WIPO), based on the Madrid Agreement and Madrid Protocol. Here are the main considerations:

Filing an application:

Applicants must be nationals of a signatory state, domiciled there, or have a genuine business presence.
The application can be submitted to either the local office or WIPO, but a Chinese agent cannot be appointed specifically for this.
The application date serves as the registration date, proceeding to registration if no refusal from CNIPA or third-party opposition.
Chinese language certificate must be requested from the CNIPA to enforce registration (can take up to 3 months).

Goods and services:

Before examination, CNIPA translates goods or services into Chinese. However, protection scope should align with goods/services recorded with WIPO. CNIPA is more flexible with non-standard goods/services in Madrid applications. It rarely challenges descriptions unless categorically unacceptable (e.g., retail/wholesale services, gambling, virtual currency).

Examination period:

Takes Roughly 18 months for CNIPA to complete the formal process.

What You Need to Know the Nice Classification System in China

International trademark registrations extended to China may have a narrower protection scope due to the country's subclass system. Unlike the broader approach of the Nice Classification System used internationally, China's subclass system divides classes into more specific categories, potentially limiting protection to certain subclasses. For example, a trademark registered for clothing may only cover specific subclasses within Class 25, leaving the brand vulnerable to infringement in other areas.

China's subclass system can lead to confusion and challenges for trademark owners. Issues such as similar trademarks in different subclasses, non-distinctive trademarks, and trademark squatting are common. To protect trademarks effectively in China, companies must monitor their trademarks regularly, take legal action when necessary, and consult with local attorneys experienced in Chinese trademark law. By understanding the subclass system and proactively managing trademarks, companies can navigate China's competitive market and safeguard their brands effectively.

Securing Your Trademark in Chinese: A Crucial Step for Protection

Registering a trademark in roman characters doesn't guarantee protection against similar trademarks written in Chinese. It's highly advisable to register a Chinese version of a foreign trademark to protect against bad faith registrations and maintain control over brand identity in China. Failure to register the Chinese character name leaves brands vulnerable to exploitation and potentially costly legal battles. For instance, in 2015, New Balance lost a trademark case and faced substantial damages for infringing on a Chinese individual's registered Chinese name.

To mitigate such risks, it's crucial to secure a Chinese character trademark and ensure its availability for registration in China. For instance, Gucci's Chinese name (古琦) serves as a phonetic imitation, with 古 meaning ancient and 琦 alluding to valuable stones like jade. This demonstrates the importance of securing a Chinese character trademark that aligns with the brand's image and resonates with local consumers.
Collaborating with trademark attorneys, marketing experts, and native Chinese speakers can help in crafting an appropriate Chinese name that aligns with the brand's image and resonates with local consumers.

Applicants should be aware of three main approaches to selecting a Chinese trademark name: literal translation, phonetic translation, and a combination of both. Each method offers distinct advantages and considerations, emphasizing the importance of careful planning and cultural sensitivity in building a successful brand presence in China.

What are the Most Recent Developments in Trademark Protection in China?

In China's first-to-file system, many small and medium-sized enterprises face challenges when they fail to register their trademarks, only to discover that their marks have been preemptively registered by Chinese entities. These strategic registrations, known as 'bad-faith registrations,' are often aimed at profiting from the trademark's value by selling it back to the original owner at inflated prices. This practice restricts foreign companies' freedom to operate in China and can disrupt their ability to source goods from the country, as the Chinese trademark holder can intercept goods bearing the trademark at customs.

To address this issue, China implemented changes to its trademark law in 2019, aiming to curb bad-faith registrations and strengthen brand owners' legal rights. The new law explicitly prohibits bad-faith filings and introduces measures for opposition and invalidation of trademarks registered in bad faith. Trademark agencies can now be held legally liable for handling bad-faith applications, and penalties for trademark infringement have been increased. Additionally, the new guidelines specify criteria for identifying bad-faith applications, including registrations attempting to exploit famous or distinctive trademarks and mass registrations without valid reasons. Despite these efforts, registering trademarks early remains the best strategy for protecting brands in China.

Applying for a Trademark in China

Step. 1 Crafting a Distinctive Sign

A trademark needs to stand out to be eligible for registration. It should possess distinctiveness, which means it should be unique enough to identify the source of goods or services without causing confusion among consumers. Essentially, the more original and less common your name, logo, or brand elements are, the better your chances of approval by the CNIPA.

Step 2. Conducting a Prior Search

Before applying for a trademark, it's crucial to make sure it's not similar to existing registered marks. Many new businesses have faced rejection from the CNIPA or opposition from competitors because they didn't conduct thorough research beforehand. In trademark law, earlier filers hold stronger rights over similar marks, even if the registration process isn't complete yet. That's why it's advisable to search the CNIPA trademark database before submitting your application.

To conduct a search for existing trademarks in China, you can use the online database provided by the China National Intellectual Property Administration (CNIPA) as follows:

Visit the CNIPA website
Navigate to the "Trademark" section on the right under "quick links".
Click on the "SISTM Trademark Search" link to access the search database.
Enter the desired search criteria, such as the trademark name, registration number, applicant name, or other relevant information to determine if there are any conflicting trademarks that may affect your trademark registration process.

At Nominus.com, we also offer a search engine in English, where you can search according to Trademark names (similarities and equivalents) class and status (active or non-active).

Step 3. Submitting an Application

Trademark registration in China can be done through the national or international system. Foreign applicants need to authorize a trademark agent to file their application directly with the CNIPA. Alternatively, they can opt for the World Intellectual Property Organization (WIPO) to apply for a Chinese trademark. When filing internationally via WIPO, you can designate China either during the initial filing or at a later stage. Each filing process has its pros and cons.

Step. 4 Initial Evaluation

Once a trademark application is submitted, it goes through two stages of examination within six months. First, a formal examination checks if the application meets administrative requirements. Then, a substantive examination assesses the mark's compliance with Chinese Trademark Law. If everything aligns, the application is preliminarily approved and published for 3 months in the Chinese Trademark Gazette to allow for potential opposition.

Step. 5 Publication in Official Gazette

The publication marks the beginning of a three-month period where third parties can oppose the mark if they believe it's identical or similar to theirs. If no opposition is filed within this timeframe, or if an opposition is filed but fails, the trademark gets registered. Its validity begins from the end of this three-month opposition period and lasts for 10 years.

Step 6. Registration

If no opposition is raised, or if opposition is dismissed, the CNIPA registers the trademark and issues an approval certificate to the applicant. A registered trademark in China is valid for ten years from the date of approval and can be renewed every ten years thereafter.

How can I Keep my Registration?

A national Chinese trademark registration remains valid for ten years and can be renewed indefinitely for another 10-year protection period. Renewal applications must be submitted within 6 months before the expiration date. If the owner misses this deadline, they may receive a 6-month extension. However, failure to apply within this extended period will result in the cancellation of the registered trademark.

Monitoring your Application

Securing trademark registration in China is just the first step; monitoring the application process is equally essential. As the Chinese market dynamics evolve, staying vigilant throughout the registration journey is paramount for safeguarding your brand's integrity and avoiding potential pitfalls.

Once your trademark application is submitted, regular monitoring of its status is crucial. This entails tracking updates provided by the Chinese Trademark Office (CTMO) to ensure that the application progresses smoothly without encountering any obstacles or oppositions.

Furthermore, monitoring helps in promptly addressing any challenges that may arise during the application process, such as objections or conflicting filings. By staying proactive and responsive, you can take timely action to protect your trademark rights and prevent unauthorized use or registration by others.

Additionally, keeping abreast of changes in trademark laws and regulations in China is vital. These amendments may impact your application or affect the broader trademark landscape, necessitating adjustments to your strategy.

Engaging with experienced trademark professionals who understand the intricacies of the Chinese market can streamline the monitoring process. They can provide valuable insights and guidance, helping you navigate any complexities and maximize the effectiveness of your trademark protection efforts.

Hiring a Local Representative or Lawyer

Engaging a qualified representative or lawyer with expertise in Chinese trademark law can be invaluable when navigating the intricacies of trademark registration in China. These professionals possess a deep understanding of the local legal landscape, procedures, and cultural nuances, ensuring that your trademark application complies with all relevant regulations and requirements.

By entrusting your trademark registration to a knowledgeable local representative or lawyer, you gain access to their specialized knowledge and experience, minimizing the risk of errors or oversights that could jeopardize your application. They can provide valuable guidance on selecting an appropriate Chinese name for your trademark, navigating the subclass system, and addressing any potential challenges or objections that may arise during the registration process.

Furthermore, having a local representative or lawyer on your side can streamline communication with the Chinese authorities, expedite the application process, and enhance your overall chances of success. Their expertise can help you anticipate and mitigate any legal or procedural hurdles, ensuring a smoother and more efficient trademark registration experience in China.

Conclusion

Navigating the trademark registration process in China is essential for businesses seeking to establish and protect their brands in one of the world's largest and fastest-growing markets. Failure to register trademarks can lead to significant risks, including infringement, legal disputes, and loss of market share. However, by understanding the intricacies of the registration process, staying informed about recent developments in Chinese trademark law, and engaging with experienced professionals, businesses can safeguard their intellectual property rights and ensure long-term success in the dynamic Chinese market.

By Rick Crandon