Securing your brand in China

Nailing the country’s trademark application process can be achieved by following a series of steps, says Cynthia Wang of Kangxin.

China’s market continues to be a draw for businesses worldwide, despite economic challenges.

According to a World Intellectual Property Organization’s (WIPO) report released in November 2024, global trademark applications and registrations saw a decline in 2023, reflecting broader economic trends.

China, while not immune to this trend, has experienced a moderate decrease over the past three years, maintaining a substantial share of global filings, with over 7 million annually in recent years.

This resilience highlights China’s enduring appeal as a centre for innovation and commerce. For businesses looking to tap into this vast market, securing brand protection through trademark registration is crucial.

In China, the “first-file” principle prevails, which grants exclusive trademark rights to the first applicant in China, although the unregistered trademark also receives a certain level of protection under specific conditions.

This article outlines the steps involved in trademark registration in China, underscoring the importance of understanding the legal framework and requirements for a successful application.

Step 1: Defining your mark

Begin by determining your trademark. In China, any visual sign capable of distinguishing the goods or services of one natural person, legal entity or any other organisation from that of others, including any word, design, letters of an alphabet, numerals, three-dimensional symbol, combinations of colours, sound, as well as combination of the above, may serve as a trademark for registration. Choose the mark based on your business needs.

Step 2: Conducting a search

Before applying for a trademark in China, it is advisable to perform a comprehensive search by hiring a local professional trademark agency. This ensures that your desired mark is inherently registrable and is not already registered or in use by another party.

Such a thorough search helps avoid potential conflicts and legal issues later on. If any bad-faith registrations are identified, you can also take necessary action in advance to increase the chance of registering your own trademark in China.

Step 3: Preparing your application

No prior use is required for filing trademark applications in China. The important thing during this stage is to select the appropriate classes and descriptions of goods or services under the Chinese Classification system.

This system is mainly based on the Nice Classification but includes revisions tailored to the Chinese market, namely, each class is further divided into several subclasses, and the goods/ services in different subclasses are usually considered dissimilar, unless otherwise stated, even if they belong to the same class.

In addition, the China National Intellectual Property Administration (CNIPA) primarily accepts standard descriptions of goods and services based on the Chinese Classification system.

So, it is important to choose the proper goods/services descriptions and subclasses to ensure adequate protection.

Step 4: Submitting your application

Foreign applicants must appoint a local authorised trademark agent to file their trademark applications in China. Chinese businesses can file the applications directly or through a trademark agent.

Once the application is prepared, it can be submitted to the CNIPA through its official e-filing system.

The application should include:

• A completed application form filled online;
• A clear representation of the trademark;
• Proof of identity or legal entity status with Chinese translation;
• Power of attorney, if the application is being filed through an agent.

Step 5: Formality examination

After submission, the CNIPA will conduct a formality examination to verify that all the required documents and information are present and properly completed. This includes reviewing the claimed goods/services and for missing information or errors.

If there are any deficiencies, the applicant will be notified and given a chance to correct them within 30 days from the receipt date of the said official notification.

Assuming everything is in order, the CNIPA will issue a payment notice within approximately two weeks from the filing date. After the official fee is paid, a formal filing receipt will be issued (recently, this process has been taking about one to two months).

Although failure to respond promptly to any official notification of amendment or providing an inadequate response can lead to the rejection of the entire application, resulting in the loss of the filing date.

Step 6: Substantive examination

Following the formality examination, the CNIPA will conduct a substantive examination to determine if the trademark meets the requirements for registration.

This includes, but is not limited to, assessing distinctiveness, whether it is descriptive or generic, whether the mark has any negative influence, and whether it conflicts with existing trademarks.

For instance, trademarks containing famous geographic names like ‘Milan’ or ‘New York’ are prohibited from registration and use; a trademark containing any religious element are typically rejected; and for non-traditional trademarks, such as 3D marks, the requirements are more stringent, often leading to rejections due to a lack of distinctiveness.

If the trademark is provisionally rejected by the CNIPA, the applicant can request a review of the refusal within 15 days from the receipt date of said refusal notification.

If the review decision is unfavourable, the applicant can appeal to the Beijing IP Court (first instance) and then to the Beijing Higher Court (second instance).

Step 7: Publication and opposition period

If the trademark passes the substantive examination, it will be published in the Trademark Gazette for a three-month period. During this period, third parties can file oppositions if they believe the trademark infringes on their existing rights.

If no oppositions are filed or if they are resolved in favour of the applicant, the trademark will proceed to the next stage.

Step 8: Registration and issuance of certificate

Following the opposition period, if there are no oppositions or if the opposition has been successfully overcome, the CNIPA will proceed to register the trademark and issue an electronic registration certificate.

If the prosecution goes smoothly, it takes around seven months from filing date to obtain a trademark registration certificate from the CNIPA.

This certificate provides legal protection for the trademark in China and must be renewed every ten years.

Step 9: Post-registration monitoring

Even after registration, it is important for trademark owners to monitor the market for potential infringements and to take proactive measures against unauthorised use and any trademark squatters.

This can involve sending cease-and-desist letters, initiating administrative actions with the CNIPA, or filing lawsuits in Chinese courts.

Additionally, it is essential to maintain usage of the trademark and to preserve use evidence well. In China, the requirement for trademark use differs from that in other countries, such as the US.

The use evidence or other relevant proof is not necessary at the filing stage, but it will be required when the registered mark is challenged by a third party based on non-use for three continuous years.

Such cancellation can only be initiated three years after the publication of the registration date. If the registrant of the registered mark fails to provide sufficient use evidence, or if the evidence is deemed invalid, the mark will be cancelled.

Registering a trademark in China involves a multi-step process that requires attention to detail and adherence to the legal requirements.

By understanding the process and proactively managing the application, the businesses can swiftly file, astutely contest, and ultimately secure their brand identity in China.

Cynthia Wang is a trademark attorney at Kangxin Partners. She can be contacted at Cynthia.wang@kangxin.com