Filing Trademarks In China

Filing Trademarks In China

Before you do business in China, you should consider filing for trademark protection on your name and logo. Here is some general guidance:

Your Current Non-Chinese Trademark Registrations Won’t Apply in China

Although the EU, China and USA are covered by WIPO (World Intellectual Property Organization) under the Madrid Protocol, trademarks registered internationally under the Madrid Protocol are not protected globally. So even if you have a registered trademark in Germany or France, it doesn’t mean you’re protected in China. Nor are Hong Kong trademarks valid in Mainland China.

But the good news is that foreign companies can file for trademark protection. However, a Chinese trademark agency will need to handle the registration for you.

Link: Trademark Law of the People’s Republic of China (Revised 2019)

China Is a First-To-File country

The first person to file a trademark gets exclusive rights to distribute and sell a product (generally do business) under that trademark. Even if you are a large, well-known company abroad, another entity can easily file a trademark claim on your company’s name and logo. If they are the first to do it, they receive the trademark and you have little recourse. That person would be able to stop you from distributing and doing business under your own name and logo in China, even if you have been in business longer.

What if you discover your trademark is already registered? Unfortunately, there are “trademark squatters” in China who operate in the same way as domain parkers. They will likely ask for money to transfer it to you, and you will have very few other options. This is why many lawyers suggest filing for trademark protection well in advance, before anyone ever finds out that you are considering doing business in China.

Consider Choosing a Chinese Character Name

Foreign applicants must register either the Chinese version or a direct translation of their trademark to avoid any miscommunication or infringement.

Choosing a distinct and well-considered Chinese name for your trademark is a good idea anyway, because Roman characters alone will not protect your mark. The same or similar mark can be registered by another business in Chinese characters. Also, a smart Chinese name for your company will be more comfortable for Chinese users to search for, read and speak.

You may also consider SEO when choosing your Chinese name. Most Chinese app stores weigh the title heavily for keyword searches. So while your app name may be different from your company trademark, it helps if keywords that your searchers are likely to use to find your app or services are present.

Link: How to Choose a Chinese Name for Your App, Business or Service

Choose the Appropriate Product and Service Subclasses

Currently, the 2019 version of the Nice Classification table from the World Intellectual Property Organization (WIPO) is in effect, though China further divides these classes into subclasses. You can choose one class and up to 10 subclasses per registration.

How Do I Register My Trademark in China?

First, be sure your proposed trademark meets all the following requirements:

  • The mark must be legal. It can’t be fraudulent or exaggerated in advertising, discriminate against a nationality, or be similar to the name or flag of a state or international organization.
  • The mark must be easily differentiated from other registered trademarks. China will not accept trademarks that cause confusion with or try to sabotage competitors.
  • The mark cannot be descriptive of the goods or services provided. For example, a company that sells oranges can’t trademark an orange or image of an orange, because these are generic terms that anyone is free to use.
  • The mark must be available for registration. It cannot already exist in the CTMO’s official database. Note: need to add what CTMO means.
  • The mark should have a positive connotation.

The process for registering a trademark in China with the State Administration for Industry and Commerce (SAIC) generally takes 12-16 months to complete:

  1. Check if the trademark is already registered.
  2. Submit the application form and supporting documents to SAIC.
  3. SAIC reviews the application and confirms whether you can proceed or if they need more information.
  4. SAIC starts processing the trademark registration (normally takes 1 year).
  5. SAIC approves and issues the trademark (about another two months).
  6. After about two more months, SAIC will send you a certificate of approval.

How much does it cost to register a trademark in China?

Trademark check fee: ~120 USD
Registration fee: ~1000 USD (including legal fees).
Government fees: ~100 USD, but normally included in the trademark agency’s fees.

How Can I Renew My Trademark in China?

Trademark registration lasts forever, but must be renewed every 10 years. If you apply for renewal at least six months before expiration, you can extend for another 10 years. Much like in other countries, if you do not use your trademark in commercial business and/or actively protect it for a period of 3 years, you are in danger of losing it.

AppInChina Can Make This Easy

Getting official work done in China can be challenging if you don’t speak Chinese or have little experience working with the relevant Chinese government agencies and officials. However, our international team based in Beijing is ready to assist you with trademarks and a variety of other essentials for getting your app published in China. From distribution to localization to monetization, we make it easy for our clients to find success on the Chinese android app store market.

We can help you too. Click the button below for more details.