Register a trademark in China

With a large market, trademark registration in China 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. 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.

Trademark protection regime in China

The Chinese market is a large market with rich potential for Vietnamese businesses to invest in expanding their market. Therefore, registering a trademark in China is necessary for businesses to stand firm in the market, help distinguish their goods and services from those of other entities, and prevent fake and counterfeit goods affects the reputation and quality of businesses. In addition, trademark protection in the Chinese market also brings additional sources of income for businesses when transferring or licensing trademark rights.

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.

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): 40 USD.

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.

Spatically, trademark protection registered in CNIPA arises only throughout mainland China, excluding the territories of Hong Kong, Macau and Taiwan.

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.