Bad faith registrations by trademark squatters in China: the nightmare of every brand owners.
No matter which country you are running your business in, once your brand catches attention of more customers, it will also be noticed by trademark squatters, followed by unauthorized trademark registrations. Instead of spending 100x the registration fee to buy your trademark right back from squatters in China, why not getting the brand registered before anyone do it on behalf of you?
In this article, we will share all the information you need to know to get your trademark registered in China.
Information/ Documents required for China Trademark Registration
1) Applicant's Identity
Both an individual and a company can be an applicant and own a trademark in China. As trademark right is a kind of asset which carries nominal value, you should think carefully on who should be the owner.
2) Applicant's Address
Both addresses in Hong Kong or overseas would be acceptable for a China trademark application.
3) Trademark Image
Is your trademark a logo? Or if it is a pure wordmark? A mixture of both? No worries, they all can be registered.
The truth is, when submitting a trademark application, no matter whether your trademark consists only of words, only of logo, or a combination of both, they would all be acceptable as a trademark image.
4) Trademark Classification and Description of Goods and Services
The scope of protection of a trademark registration is not unlimited. You must designate specific trademark classes and the products and services items (which define the protection scope of the trademark registration) according to the products and services to be provided by the trademark when submitting the application.
There are in total 1 - 45 trademark classes, based on the nature of the products and services. For example, if your trademark is a clothing brand, you will have to designate Class 25 (a class for clothing products) in your trademark application, and specify the products (such as shirts, trousers etc.). Another point to note is that the cost of the trademark is determined by the number of classes in the application. The more the classes, the higher the fees. To know more about trademark classes, you can check out this article written by us: What are trademark classes? (In Chinese)
5) Power of Attorney (For non mainland Chinese applicants)
As required by the China Trademark Law, if the applicant is not an individual Chinese/ a mainland Chinese company, the applicant must entrust an recognised agent to act and file applications on behalf of them.
A Power of Attorney document, for the purpose of entrusting an agent, would be required when filing an application in China.
Procedure of China Trademark Registration
With all the information and documents ready with you, you are now all set to file a China Trademark Application!
Step 0: Trademark Search
Trademark search is not a compulsory step for applying for trademark registration, but we cannot stress its importance enough!
Conducting a trademark search means checking the China Trademark Office's database to search for any prior/ existing trademarks that might be considered as similar to your trademark. If such trademarks exist, your application would have a higher risk of refusal.
In order to greatly increase your chance of success for your trademark application, we strongly recommend carrying out a search before filing your application. Please note that in addition to locating identical or similar trademarks, you will also need to search in identical or similar trademark classes that you intend to apply for. If no identical or similar trademark is found in the search, the chance of approval for your application should be higher, even though no one could guarantee 100%. Of course, it also depends on whether the search is thoroughly done.
Step 1: Filing of Application
An application can be filed in person in China, or more commonly, through online submission, to the China Trademark Office（国家知识产权局商标局）.
Step 2: Official Trademark Examination
After the application is filed, the China Trademark Office will take around 6 to 9 months to process and examine the application. There are two kinds of examination:
Examination on Formality: check whether the application form is filled in correctly, with the specifications and descriptions of the goods and services drafted in an acceptable manner
Substantive Examination: check whether the trademark itself contains any problem making it unfit for registration; or whether it is similar to any prior trademark, and determine whether to approval the application or not
If the application fails to pass the above two examinations, depending on the situation, official letters will be sent to the applicant (or its trademark agent), requesting the applicant to correct, change or delete information in the application. If the trademark is not suitable for registration/ similar trademark(s) is located, a refusal letter would be issued. If the applicant does not reply to the official letters, the application will be rejected.
(For the examples of what trademarks cannot be registered, please refer to: descriptive trademarks / deceptive or dishonest trademarks / identical or similar to prior trademarks) (in Chinese)
Step 3: Publication Period
Assuming the application is approved and goes smoothly, after examinations, it will enter a 3-month publication period.
The purpose of the publication period is to allow anyone who wants to oppose the application to submit an opposition application within the three-month publication period. If someone thinks that the trademark should not be registered, they will have a chance to submit an opposition.
During the publication period, we always say no news is good news, as it simply means your application is not attracting any opposition!
Step 4: Registration Certificate
Should there be no opposition filed against your application, after the publication period has passed your trademark will be officially registered. The certificate will be issued around 1 - 2 months after the publication period.
The registration will be valid for 10 years, and can be renewed every 10 years. The certificate will be in e-format.
Tips on China Trademark Application
Although the procedures of trademark registration in China are somehow similar to those in Hong Kong, there are some aspects which require extra attention.
Registrability of the Trademark
Not every creative trademark can be registered, and it is especially the case in China. Because of the Government's requirement, the following examples are not registrable (not inclusive):
names made out of puns
made up Chinese words
names containing famous geographical locations
vulgar words
A trademark falling into any one of the above aspects would be outright refused, so you should check carefully before filing your application!
Description of Trademark Goods and Services
Similar to those in the United States, China has it's own set of goods and services terms for filing. Make sure your application's descriptions of goods and services align with those in the standard list pre-approved officially, otherwise your application might risk refusal.
Actualis' China Trademark Registration Service and Fees
Not sure how to get your trademark registered in China? Require an authorized agent to file the application on behalf of you? Come discuss with us!
We are a professional IP agent with extensive knowledge, capable of assisting you to complete trademark applications without hassle. We have abundant experience in handling cases for a wide spectrum of companies with different natures, and excels in providing tailor-made filing strategies for your company.
Our rates for preparing and filing China Trademark Applications are as follows:
Each application: HK$2,000 (inclusive of government fees)
Welcome to contact us for free consultation should you have any question regarding China trademark applications: +852 9545 3177（Telephone／Whatsapp）；ip@actualisip.com。