5 Steps to Successful Trademark Registration

By Richard Hoffmann, ECOVIS Beijing China

The Chinese trademark law adopts a first-to-file rule for obtaining a trademark. Therefore in the vast majority of cases, whoever files first for a particular trademark will obtain the trademark rights. Unfortunately there are numerous cases where Chinese companies secured trademark rights for product and services of foreign companies. In that case the Chinese company has the legal right to use it and it can be costly to get the trademark back. Hence it is recommended to register a company trademark as soon as possibly when entering the Chinese market. This also applies for companies that merely outsource their manufacturing to China.

The State Administration for Industry and Commerce (SAIC) as well as the Trademark Office are the responsible authorities for the registration of trademarks in China.

According to the Chinese trademark laws, any visually perceptible sign, which distinguishes the good or service clearly from others is eligible for trademark registration. This includes words, devices, letters, numerals, three-dimensional signs, combination of colors as well as the combination of such signs.

Unregistered trade marks of established firms are not protected in the PRC unless they are “well-known” to the public.  Whether or not a brand is considered to be well known depends on factors such as the reputation of the trademark in the relevant sector of the public and geographical scope of the trade mark.

There are 34 categories for goods and 11 for services as well as sub categories. Depending on the business scope and future expansion plans,  it might make sense to register one trade  mark in different categories. In order to register the same trade mark of goods in different categories, a registration for each category has to be filed.

A registered trademark is valid for 10 years, starting at the date of approval of the registration but it can be renewed. The period of validity of each renewal is 10 years.

Also, it is advisable to register the trademark with Chinese Customs.  This is particularly useful if counterfeits of your products are believed to be coming from China.

Any foreigner or foreign enterprise that intends to apply for registration of a trademark (or for any other matters concerning a trademark in China) should entrust a company that is qualified in trademark registration (and recognized by the State) to be the its representative.

Most important Steps:

Here an overview of the most important steps when registering a trademark:

1. Research

• It is recommended to conduct a thorough “trademark search” to avoid filing an application with has little chances of being approved. Please not that after a trademark application has been submitted, it cannot be changed.

2. Submit documents and filing to the China Trademark Office

Some of the information required includes:

• Business license
• Letter of instruction
• Sample of trademarks and the nature of business
• List of goods covered by trademark application and product(s) category

 3. Receive Filing receipt

• The China Trademark Office will provide a receipt for the filing and an application number (usually within 45 working days).

 4. Examination and Publication

• The China Trademark Office will approve or disapprove of the application. Once approved the application will be published in the Trade Mark Journal for 3 months. If nobody objects to the application within that time frame, the trademark will be registered. If the application is rejected it is possible to apply for a review within 15 days.

5. Registration of the trade mark

• Upon approval a Registration Certification will be received. The registration date is equal to the submission date of the application.

Time frame:
 If registration application runs smoothly, it usually requires about 1 to 1.5 years.

Did you know?
There are a many fake trademark registration companies. Companies often realize when the money is gone that the trademark was never actually registered.

Ecovis China can help your company with all the steps above and advise you adequately on how to protect your intellectual property rights in the best way. Also, we can provide professional advice in legal, fiscal, managerial and administrative issues.