If you want to register a trademark in China, and you are wondering where to start, then you’re in the right place.
If you plan to do business in China it is a very important step. Having a United States trademark protects you from trademark infringement in the US, but it does not protect you in China. If you plan to do business in China, then registering your trademark there as well is absolutely imperative, and as you will learn below you need to do this sooner rather than later…
Trademark Policy in the United States Versus China
In the United States trademark law runs on a first-to-use basis, so the first person or business to use a trademark has common law rights to it. This is true even if the trademark has not yet been registered.
In China, however, these rights are taken on a first-to-file basis. This means that regardless of who uses it first, the first person or business to file the trademark is able to obtain the rights to the mark. This is significant because if you have a trademark in the United States for a hot product, someone can, in essence, take the idea and register a trademark in China and have the rights to your product there.
As a result, you should be sure to register your trademark in China as soon as possible if you do business there in any capacity.
Why You Need to Register Your Trademark in China
China only recognizes trademarks that are registered in China. Brands that have lots of exposure and are widely recognized are quite likely to face trademark counterfeiters, squatters, and grey market suppliers, and because China’s trademark law runs on a first-to-file basis, you can conceivably lose out to anyone who files for your trademark in China before you do.
For example, in 2017, New Balance finally won a two-decade-long battle against manufacturers and sellers in China. They eventually won the biggest payout ever for a foreign company in China, but the point of this story is that it took them 20 (!) years to get there. It is a cautionary tale about why you must register your trademark asap.
Having your trademark registered in China provides local protection against counterfeiters and grey-market suppliers and allows for counterfeit products to be seized by Chinese customs. This is critical to maintaining your brand.
How to Prepare to Register Your Trademark in China
People often wonder when they should register their trademarks in China. The answer is that you should start the process right away. The fact that China recognizes the first person to file the trademark as the trademark owner means that you need to be the first person to register.
You do not need to wait for your trademark to be registered in the United States. You need to file your application within six months of your United States application so that you will be able to claim the United States filing date as your priority date in China. An article of the Paris Convention gives you the right to apply your United States priority date to your Chinese trademark application.
In addition, you should consider how you plan to translate your trademark in China. If you expect to sell goods in China using Chinese characters, you should file a Chinese version of your trademark as well.
How to Register a Trademark in China
The average time frame for registration approval in China is 15 months, as long as no objections arise. Once you file your trademark, keep in mind that it can be attacked for nonuse. You will need to use it within three consecutive years after registration.
A trademark is used to identify the specific use of a service or a good, and the purpose is to allow consumers to know the difference between different producers. The trademark can be made up of letters, numerals, words, three-dimensional shapes devices, color combinations, or any combination of any of these items.
The China Trademark Office has some requirements that you need to meet to have your trademark application approved in China. You will need to verify the following:
- The trademark must be available for use
- The trademark must be easily distinguished from other registered trademarks
- The trademark cannot describe the goods or services provided
- The trademark needs to have a positive connotation
There are also trademarks that are not registerable in China:
- Trademarks that are against moral standards or public order in China
- Trademarks that may mislead consumers
- Generic words or terms
- Trademarks that lack distinctive qualities
- Trademarks that are used to name a geographical location
- Symbols, flags, names of nations, states, regions, or international organizations
You can either submit your trademark application through the Madrid Protocol, where you check off all of the countries you want to register your trademark in, or you can submit it directly to China through the China Trademark Office. You might consider using a trademark attorney to ensure that your application is complete. Once you receive your trademark, it is good for 10 years, as long as you continue to offer the goods and services that are covered.
Process for Registering Your Trademark in China
The first step is to file your application. You can choose between filing through the World Intellectual Property Organization (WIPO) or the Chinese Trademark Office (CTMO).
The 1957 Nice agreement creates the International Classification of Goods, and China accepts these classifications. However, China divides these classes into subclasses. It is important to register your goods and services in every single subclass for which it is eligible. If you do not have it registered in a particular subclass, somebody else can register it there for their products or services.
Another important consideration is that you should register your trademark both in Roman or Latin characters and in Chinese characters. If you do not, someone else can register your trademark in Chinese characters. You could lose business or brand value this way.
Benefits of Submitting Your Application for a Trademark Directly to the CTMO
If you do not have a residence or place of business in China, you need to use an agent to submit your trademark application directly to the CTMO. This is preferable to the Madrid Protocol because it will give your business greater control over the entire process. You will choose which class and subclasses to use, and you can also specify what kinds of products and services are going to be covered by your trademark.
How to Choose the Chinese Name for Your Trademark
There are some funny and not-so-funny stories about mistakes that major companies have made in deciding on a Chinese name. Best Buy originally chose two characters. The first was a character that means “best” and the second means “buy.” However, added together, it translated “think a hundred times before you buy.”
You should be careful and make sure you choose the right Chinese name for your trademark. There are several different strategies you can use to choose your name.
One strategy is to try to choose a phonetic translation so that the name will sound the same. McDonald’s chose Mao Dang Lao, which sounds similar to McDonald’s. Other companies have done the same. This works well if you have a brand that is already familiar to Chinese consumers.
Another option is to use a literal translation. You need to be careful, though, because you don’t want to end up with the situation Best Buy had. Coca Cola is another company that had an issue. Originally, they used the name “Ke Dou Ken La,” which translates roughly to “Bite a wax tadpole.” However, the Chinese word for Apple is “Ping Guo,” so that worked out well for them.
If you choose the literal translation, you may need to spend time and energy marketing your items to gain name recognition.
A third tactic is to use some combination of phonetic and literal. This can be very effective. Coca Cola now uses Ke Kou Ke Le, which means delirious happiness, and it works for them.
How Long Does It Take to Register Your Trademark?
Effective January 1, 2019, a new policy has reduced the amount of time it takes to register a trademark. There are three steps that you have to go through:
- Formal Examination: The first part of the process determines whether your application meets the format requirements, and it has been reduced from two months to one month.
- Substantive Examination: In this phase, authorities decide whether or not your trademark is substantively able to be registered. They will either send a preliminary registration or a letter of rejection. This step takes six months, reduced from eight.
- Examination of trademark assignment: The period of this step has been reduced from six months to four months.
As long as you follow the policies and conditions set out above, you should not have difficulty getting your trademark approved. The name is important, both for your brand and to make it easier to gain approval. If you translate your name into Chinese, you should seek assistance from someone who is familiar with the language to ensure that your name has the meaning you want it to have.
Be sure to register your trademark in China as soon as you are ready because it is a first-to-register country, which means that someone else can claim your trademark if they get there before you do.