Register your mark as soon as you decide on the word or slogan!
Unlike the United States which confers trademark rights upon the first party to use a trademark in commerce, China adopts a “first-to-file” system that grants trademark rights to the party that first applies to register the trademark. This leads to a serious problem in China, namely trademark squatting. Though unregistered trademarks are offered with some limited protection, it takes much more energy and resources to get the squatted trademarks back. Registering a trademark is an effective way to prevent any bad-faith trademark squatting and will be a powerful tool to enforce your trademark right down the road.
When should I start to register a trademark in China? As soon as you have devised the word mark. Don’t wait until you have designed the logo to start the trademark process. For example, if you decide to use “Orange” on electronic devices, go straight forward to register it as a word trademark first (trademark search if of course an integral part of trademark selection process). Then take whatever time to design the logo for Orange and file a separate logo trademark later.
If you file a trademark in the US or other countries, then you suddenly realize to register a trademark in China. Don’t worry. China is a signatory to the Paris Convention. Any trademarks filed in other signatory countries will enjoy a six-month period of priority in China. For example, you filed a trademark in the US on Feb. 12, 2015 and you started to file the application in China on June 1, 2015. If you claim priority from the US filing, your application date in China will date back to Feb. 12, 2015, thus outpacing any applications filed between Feb. 13, 2015 and June 1, 2015.
So, what are the major steps for registering a trademark in China? Below are the general steps for your reference.
Step 1: Select a Chinese Trademark Agent
The Trademark Law provides that a foreign company that has not established a physical presence in China must register its mark through a State-designated trademark agent like intellexpro.com. A foreign company that has a presence in China is not required to use such agents and may apply directly to the Trademark Office, although using a trademark agent to assist in the process is highly advised.
Step 2: Determine Whether the Mark is Eligible for Registration
A trademark agent or lawyer will determine whether a trademark is eligible for registration under Chinese law. See “Coverage – What Can Be Trademarked”, above. The agent or lawyer also will conduct a preliminary search at the Trademark Registry for registered similar or identical trademarks. Usually, this is done along side with the process of trademark selection. You may request a free trademark search at out website.
Step 3: Determine the Number of Classes
China uses the International Classification of Goods, which categorizes commodities and services into 45 classes, with sub-group. A trademark must be registered in connection with at least one particular class of goods. However, it is often a good idea to register your mark in classes of products you may make or sell in the future, or where there is room for consumer confusion.
Step 4: Complete the Application Forms and other Documents
Complete and sign the Power of Attorney, also referred to in China as a “Letter of Entrustment”, and a copy of the current Certificate of Incorporation, or passport in case of individual applicant. Chinese translation of the Certificate of Incorporation is required, but no legalization or notarization is required. Application forms are not required to be signed by foreign entities or individuals because agent’s stamp and signature are sufficient.
Step 5: Application for Priority Registration under an International Agreement
If the applicant is entitled to priority registration under an international treaty or agreement, the applicant must claim priority in the Trademark Application Form and provide sufficient evidentiary documents within three months after filing the application in China. An original certificate of the foreign trademark registration/application certified by the Trademark Office in other countries must be provided together with a translation. No legalization or notarization is required. Failure to provide this document within the three-month period, or failure to submit a written statement to request the right of priority, is deemed a waiver of the right.
Step 6: The SAIC Trademark Office Review
The Trademark Office will review the trademark application materials to ensure that it they are complete and comply with all the application requirements, and that the trademark meets criteria for eligibility for registration.
Step 7: Preliminary Approval and Publication in the Trademark Gazette, or Rejection of the Application
If the Trademark Office determines that the application packet is complete and no other similar or identical trademark has been previously registered, the Trademark Office will grant preliminary approval and publishes the trademark in the Trademark Gazette. The trademark application is subject to public opposition for a period of three months.
Where the Trademark Office decides to reject the application, it must notify the applicant in writing. Within 15 days of receipt, the applicant may request administrative review by the Trademark Review and Arbitration Board (TRAB). If the applicant is dissatisfied with the TRAB decision, it may seek judicial review by filing an administrative appeal to the Beijing Intellectual Property Court within 30 days of receiving written notification of the TRAB decision.
Step 8: Registration
If no party files an opposition to a mark that has received preliminary approval within three months, the Trademark Office will register the trademark and publish notice of the registration in the Trademark Gazette.
