Register a trademark in China

With a large market, trademark registration in China of billions of people is even more important. Therefore, registering a trademark in China is necessary for businesses to stand firm in this populous market, helping to distinguish their goods and services from those of other entities. Prevent acts of counterfeiting and counterfeiting that affect the reputation and quality of businesses in the Chinese market. In addition, trademark protection in the Chinese market also brings additional income for businesses when transferring trademark use rights. In the following article, Viet An Law will provide an overview of the way to register a trademark in China according to current law.

Legal basis

• China Trademark Law 2019.

Reasons to register a trademark in China

With a large market like China, trademark registration in this country of billions of people is even more important. Evidence of the urgency of trademark registration in China is the leading number of trademark infringements in this country compared to other countries in the world. Therefore, if you want to develop business, trade, and export goods in China, traders need to register trademarks in China to avoid disputes related to trademarks in this market.

Trademark protection regime in China

For protection in China, a registered trademark needs to meet the following conditions:

• The trademark must not infringe absolute grounds for trademark protection. For example, do not fall into cases of submitting registration with bad faith or not for the purpose of use, the label pattern infringes on unregistered signs such as the badge of a state agency.
• The trademark must have distinguishing features of goods and services;
• The trademark must not infringe the rights to a pre-established trademark, well-known trademark, a previously filed trademark application;
• The trademark must not conflict with other pre-established intellectual property rights of others.

How to register a trademark in China

Trademark registration in China can be done through two ways: filing an application directly with the National Intellectual Property Administration of China or assigning trademark protection in China through the Madrid System.

Apply for trademark registration directly in China

Similar to Vietnam in the case of direct protection registration in China, the mandatory filing is done through an established Intellectual Property Representative unit providing trademark registration services. according to the provisions of Chinese law. Accordingly, if the application owner only needs to register trademark protection in China, he should choose to register directly in China, which can help the application owner save time and money compared to registering. through the Madrid system.

File a trademark application under the Madrid System

The Madrid System is an international system of trademarks and is governed by the World Intellectual Property Organization (WIPO). According to the operating principles of this system, the International Office will only be responsible for checking the formality of the application. The authority to review the content of the registration application (check its compatibility with national legal regulations on trademark registration) and grant a Protection Certificate still belongs to the Intellectual Property agency of China. Thus, in case the applicant wishes to register trademark protection in many countries, the Madrid system will be a cost-effective system and unified procedure.

Trademark registration application in China

When registering a trademark in China, the applicant must provide the following necessary documents:

• Trademark registration declaration in China (prepared according to form); In China, a registration application declaration can contain up to 3 groups of goods and services associated with a trademark.
• Sample of goods and services trademark (clear) intended to be registered;
• Detailed list of goods and services accompanying the trademark;
• Documents confirming priority rights (if any);
• Documents for collection of fees and trademark registration fees;
• Legal documents of individuals, organizations or businesses;
• Notarized Power of Attorney (in case of filing through an intellectual property representative);
• Other documents (if any).

Note: Language used for trademark registration documents:

• Can be English, French, Spanish if submitted through the Madrid system;
• Mandatory in Chinese if submitted directly to the Chinese national registration office.

Process to register a trademark in China

The trademark registration process in China is specifically as follows:

Step 1: Select a trademark sample and research the trademark

• Choosing a trademark sample, especially for letter symbols, is very important in China – a country that uses hieroglyphs and foreign languages need to be transcribed and translated into Chinese when registering to avoid domestic entities using translations of those trademarks as their own trademarks. Therefore, one of the most effective trademark design strategies is to combine literal translation and transliteration to appear on the trademark form upon registration.
• After designing and classfying goods and services for the trademark, the applicant should conduct a search for the protection of the trademark to ensure the effectiveness of the registration procedure. Although this is not a mandatory procedure, the applicant may face a high risk of having the application denied, causing costs and money without research before filing.
• China also currently uses the latest version of the Nice Classification Table as a basis for classification when registering trademarks.

Note: In-depth search results are for reference only and are not a basis for granting or not granting a certification at the time of searching.

Step 2: Submit a trademark application

Foreign applicants who do not have residence or business location in China can choose one of the following two forms:

• Apply directly to the China National Intellectual Property Administration (CNIPA) via a legal intellectual property representative in the country; or
• Apply through the Madrid system of the World Intellectual Property Organization (WIPO). If this option is chosen, the underlying trademark application must originate from a state party to the Protocol or the Madrid Agreement.

Step 3: Formality examination

Since 2019, the formal examination time has been shortened by half compared to before. Accordingly, within 01 month from the date of filing the application, the Chinese trademark registration agency will issue a Notice of Formality Examination (this Notice is the Notice of Acceptance of a valid application, if the trademark registration dossier is there are no formal errors);

Step 4: Publish in the industrial property gazette

The application will be published in the CNIPA Trademark Gazette in Chinese (https://cas.sbj.cnipa.gov.cn/) or published in the WIPO weekly gazette if submitted through the Madrid system.

However, the timing of publication of the official gazette may vary between forms of application. For applications through Madrid, the application will be published before proceeding with the substantial examination. For applications filed under the national system, the application will not be published until preliminary approval as not infringing on the absolute and relative grounds of preliminary trademark examination. This time will be significantly longer.

Third-party objections are filed within 3 months from the date the application is published in the CNIPA official gazette or 3 months from the first day of the month immediately following the month of publication by WIPO. Based on the objection and related responses, within 12-18 months, CNIPA will make a decision to approve, partially reject or reject the trademark application in its entirety.

Step 5: Grant of protection title

If no objections are filed within the above deadline, or objections are repealed, CNIPA will formally approve the application and issue a Trademark Registration Certificate (electronic version).

Note:

• The above time does not include the time to supplement missing official documents (if any) and complaints during the application process (official documents or complaints must be certified by the Chinese registration agency confirmed).
• In addition, the possible time depends on the examination process of the Chinese trademark registration agency, and the time it takes for the applicant to correct or supplement formal shortcomings of the application or there is a written complaint against the Notice of unreasonable substantial examination of the Chinese trademark registration agency.

Thus, according to the newly enacted law, the average time for processing a trademark application in China is about 11 months (not including time for amendment procedures and responding to objections arising during the processing application). This time is considered quite fast compared to many countries, meeting the need for large trademark registration in this country.

Trademark registration fees in China

In addition to the representative service fees regulated differently by each organization, China also sets state fees as follows:

• Registration fee per a class (maximum 10 goods and services in one class): state fees and fees paid to lawyers..

In addition, the applicant will have to pay additional fees for responding to objections from third parties, trademark searches, using intellectual property representation services, and notarizing certified documents as required, translation, express delivery of documents and other services related to records.

Scope of trademark protection

Regarding time limit, trademarks registered in China have a term of protection of 10 consecutive years from the time of filing. Registration renewal documents must be submitted within 6 months before the expiration date of protection. The above period can be extended for another 6 months with an additional fee due to late renewal. If not done within this extension period, the trademark will be invalidated.

In terms of space, the protection of trademarks registered at CNIPA only arises throughout the territory of mainland China, excluding the territories of Hong Kong, Macau and Taiwan.

Principles for trademark registration in China

Similar to Vietnam, in China, the granting of trademark protection certificates is based on the first-to-file principle, meaning “first come, first granted” so apply for trademark registration as soon as possible. with the China Intellectual Property Authority (CNIPA) is the most important thing and is the legal basis for the issuance of a Trademark Registration Certificate.

Some exclusionary signs are not subject to trademark protection in China

• China refuses a registered trademark containing signs related to the virtual universe, virtual currency, and cryptocurrency. At the same time, refuse registered products related to Metaverse, Non-fungible Token (NFT), Cryptocurrencies, Tokens, Virtual Currencies.
• China refuses to register trademarks for wholesale and retail services (except for wholesale and retail services of human pharmaceuticals, veterinary drugs and hygiene products under subclass 3509.
• China refuses trademarks related to astrology, horoscopes, fortune telling and spiritual consulting services because it does not consider this a business service in the market.
• China rejects trademark applications containing foreign place names widely known to the Chinese public.
• China often refuses to protect a 3-dimensional trademark (shape trademark) if it is functional, specifically it only includes a shape derived from the nature of the product, or a shape that is necessary to achieve technical goals, or the shape that gives the product great value, that is, the shape describes the function and form of the product.
• China refuses to register a trademark for containing elements that mislead or deceive consumers if the descriptive sign present in the mark is not used for the product related to that descriptive sign: from denied in full because the trademark only includes instructions that directly refer to the function of the product while the trademark contains the word “tea fusion” which is likely to cause confusion for consumers, coinciding with the name of the country and the flag of the country. Countries around the world.
• China rejects registered trademarks composed of one or two letters combined with one or two numerals that are only expressed in a simple, non-distinguishing form.

Trademark registration service in China of Viet An Law

Clients can refer to Viet An Law Firm’s services on trademark registration in some countries as follows:

• Carry out the search and notify clients in writing of the results of the trademark search in China;
• Draft documents and directly submit and monitor the status of trademark registration applications on behalf of trademark owners in China;
• Notify, advise and handle shortcomings/rejections from competent State agencies (if any) during the application tracking process;
• Receive and transfer official dispatches to clients (if any).

If you need to register a trademark in China and other countries, please contact Viet An Law for the most effective support.