In Short
- Apply Early: China’s ‘first-to-file’ system means the first applicant owns the trade mark, so file promptly to protect your brand.
- Know Your Classes: China’s trade mark system includes subclasses, which may affect the scope of your protection.
- Use Professional Guidance: Seek expert advice for Chinese-language trade marks and navigating complex application processes.
Tips for Businesses
When registering a trade mark in China, act quickly and carefully plan your application. Understand the subclass system for comprehensive protection, and file as early as possible to prevent bad faith registrations. If your trade mark includes Chinese characters, invest in professional translation services to ensure effective branding.
With the largest manufacturing industry in the world and a trade mark office that receives millions of trade mark applications each year, China can represent a crucial region for businesses seeking to protect their intellectual property internationally. However, navigating trade mark protection in a country with a different language can be difficult. This article will explain and provide tips on navigating China’s trade mark application process.
What is a Trade Mark?
A trade mark is a form of intellectual property that distinguishes your goods and services from those of other traders in the marketplace. Your customers use trade marks to identify your brand.
Types of trade marks include:
- word marks such as a business name or product name, like Coca-Cola or FedEx;
- logos with distinctive visual elements – think Nike’s ‘swoosh’ or Apple’s bitten apple;
- slogans like Nike’s ‘just do it’ or L’Oreal’s ‘because you’re worth it’; and
- unique sounds or fragrances, like MGM’s ‘lion roar’ or the scent of Hasbro’s Play-Doh (both of which are registered trade marks in the US).
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Choosing Your Trade Mark
The effectiveness of a trade mark lies in its distinctiveness. When creating a trade mark, it should be:
| Unique | Avoid generic or descriptive terms. |
| Non-infringing | Conduct searches to ensure your trade mark does not resemble an existing trade mark or brand, especially within your industry. |
| Appropriate | Your trade should be respectful and non-offensive to avoid public backlash and potential registration refusal. |
| Memorable | Your trade mark should allow consumers to associate your goods and services with your brand easily. This could be through clever wordplay, a unique design, or a catchy slogan. |
Crafting a distinctive trade mark requires careful consideration. It is part of the foundation on which your brand reputation is built. A well-chosen and designed trade mark can become an invaluable asset, shaping your brand narrative and safeguarding its future in the marketplace.
Continue reading this article below the formFirst to File
Unlike Australia’s ‘first-to-use’ system, China operates on a ‘first-to-file’ system for trade mark applications. This means that the first person or entity to file a trade mark application is considered the rightful owner of that trade mark in China.
This system can lead to complications, particularly for foreign businesses. For example, a manufacturer you are negotiating with might apply to register your brand or product name without your consent, or a third party might register a well-known foreign brand before that business enters the Chinese market.
Unfortunately, these ‘bad faith’ registrations are not uncommon in other regions, so if China is a potential market for your business, consider filing your trade mark as soon as possible.
Classes of Goods and Services
Like many countries, China uses the Nice Classification system to categorise goods and services into 45 classes. However, China further separates these classes into sub-classes, creating a more detailed classification system. This subclass system can add complexity to the application process. It can also impact the scope of protection your trade mark receives. For example, an identical trade mark might be registered in the same class but a different subclass.
Given these complexities, it is crucial to carefully consider which classes and subclasses to include in your trade mark application to ensure comprehensive protection for your brand in China.
Pre-existing Trade Marks
In light of China’s first-to-file system, you may encounter existing trade marks that prevent your application from achieving registration. It is important to note that China has a 3-year use requirement for registered trade marks. This means that a trade mark that has not been used for 3 years is vulnerable to removal for non-use. This can be particularly useful if you suspect a trade mark was registered in bad faith, as the trade mark owner is unlikely to have any evidence of use.
Chinese Language Trade Marks
Consider consulting with a language specialist if you plan to include Chinese characters in your trade mark. This will help to ensure your trade mark conveys your intended meaning. Free online translation services may not capture the nuances necessary for effective branding in Chinese. Therefore, they may not be the best option when it comes to investing in your brand.
Key Takeaways
Navigating China’s trade mark system requires careful planning and expertise. Consider applying early to protect your trade mark in China’s first-to-file system, and be mindful of the more complex subclass categorisation. Be prepared to provide evidence of use to maintain your registration. Additionally, seek professional guidance when including Chinese characters to ensure your trade mark conveys your intended meaning. By taking these steps and working with experienced professionals, you can better protect your brand in this crucial market.
If you have any questions about registering a trade mark internationally, our experienced IP lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
China’s first-to-file system means that the first person or entity to file a trade mark application is generally seen as the rightful owner, regardless of who used the trade mark first.
Registering a trade mark in China typically takes 12 to 18 months if there are no objections or oppositions.
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