Should I file my trademark in local characters?
Yes, for a broader and stronger protection in China, we recommend registering your trademark in local characters.
If the trademark is registered only in its original version (Latin characters), the protection does not always properly protect its equivalent in the local language. This means that a third party could use or register the same trademark (or a similar one) in local characters.
In additional to the legal benefits, the registration and use of the trademark in local characters can also have commercial benefits. The public in China will recognize your brand more easily if they are able to read and correctly pronounce the mark.
Registering your trademark in its original version, as well as local transliteration/translation, will provide a greater protection from any possible infringements.
Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 15 months, if no objections or oppositions arise.
If I register my trademark in China, do I have protection in other territories?
No. A registered mark is protected only in Mainland China.
Do I need to sign a Power of Attorney?
Yes. A signed power of attorney is necessary.
Are there any benefits from a pre-filing use of the trademark?
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 oppositions on the ground of non-distinctiveness.
Will there be problems in case I don’t use my trademark after registration?
Yes. A registered mark can be attacked on the ground of non-use.
What are the types of trademark that can be registered in China?
The following marks or signs are accepted for registration:
- Certain 3-dimensional shapes
- Get-up or trade dress
- Combination of all of the above elements
- Collective marks
- Service marks
- Certification marks
- Well-known marks
What are the phases of application after a trademark has been filed in China?
A trademark application in China has 3 phases:
What type of trademark is not registrable?
The following marks are prohibited from registration:
- Marks that are against the moral standards or public order of China
- Generic words or terms
- Symbol, flag, or name of a state, nation, region, or an international organization
- Marks that lack distinctive qualities
- Marks that are used primarily to indicate a geographical location name
- Marks that may mislead consumers
Does China use the "Nice Classification" system?
Yes. China uses the system of Nice Classification.
Does the Community Trademark apply for China?
No. Community Trademark does not apply for China.
Is there any possibility to claim priority in China?
Yes. Applicants may claim priority application if the following conditions are met:
- If the applicant’s home country is a member of the Paris Convention
- If the date of the home application is within 6 months prior to the filing of an application in China.
- If the applicant’s home country is a member of the World Trade Organization
- If an international registration can be based on this registration
What do I need to do to satisfy the use requirement?
The registered mark must be used within 3 consecutive years after registration. The use requirement is minimal and must occur in China.
Once my trademark has been registered, for how many years will be valid?
The registered mark is valid for 10 years.
What will be the renewal date of my trademark?
The first renewal of the trademark will take place 10 years after the date of registration grant.
Is it legal to use my trademark even if it is not yet registered?
Using an unregistered mark for tobacco products is illegal.
How many applications should I file?
The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in China.
If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).
In this case, proceeding with two trademark applications has the following advantages:
Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.
If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.
Does having a registered trademark in China give me any right?
Registration is required in order to obtain trademark rights. The “first to file” rule is applicable in China.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
No. Actual use or intent to use is not required.
What are the grounds for a Trademark Application to be opposed?
Yes. A trademark application can be opposed on the following grounds:
- Proprietary rights
- Absolute grounds (ex. descriptiveness)
- Bad faith
- Breach of copyright
- Rights of notorious marks
- Registration in the name of an agent or a representative
- Rights in a company name
- Rights in a personal name
- Rights in a registered design
- Unauthorized use of protected of insignia or emblems
- Any reasonable grounds
Who can contest my trademark application?
Any interested parties may oppose a trademark application. This includes the owner of an earlier right, a licensee, or anyone.
Is it possible to cancel a registration?
Yes. The following are grounds for cancellation:
- Descriptive mark
- Misleading and/or deceptive mark
- Lack of distinctiveness
- Generic mark
- Mark is a geographical indication
- Functional mark
- Violation of public policy or principles of morality
- Unauthorized marks by competent authorities pursuant to Article 6ter of the Paris Convention
- Inclusion of a badge or emblem of particular public interest
- Using of the mark in a misleading manner
- Prohibited marks in this jurisdiction
- Application was made in bad faith
- Registrant’s breach of a technical provision of the law
- Fraudulent registration
- Use Requirements under Section V.G. are not met
Are there any rights established by having a registered trademark?
The following rights are established by having a registered trademark:
- Exclusive right to use the registered mark
- Right to oppose subsequent conflicting applications
- Right to bring a cancellation action against subsequent conflicting registrations
- Right to file an infringement case against third parties for using a confusingly similar mark
- Right to license third parties to use the registered mark
- Right to apply for seizure of counterfeit goods bearing the registered mark (these are seized by the customs authorities)
- Right to receive damages from third parties for infringing the registered mark
How long is the opposition period?
The opposition period will start on the publication date.
The opposition period will end three months after the publication date.
Is China a member of the Madrid System?
China is a member of the Madrid Protocol and the Madrid Agreement.
Do I need to present periodic statement of use?
Periodic statement of use is not required.
When should I renew my trademark?
Trademark renewals are made every 10 years.
What will be the renewal date of my trademark?
The first renewal of the trademark will take place 10 years after the date of registration grant.
Is there any documentation that should be presented when renewing a trademark?
The following documents are necessary for a trademark renewal:
- A copy of the registration certification
- Power of attorney
- Incorporation certificate of the registrant
If my trademark expires, do I have a grace period?
Yes. A 6-month grace period is given.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.