Filing trademarks in China: key steps for foreign applicants
Foreign entities or individuals seeking to register their trademarks in China have two possible pathways, both of which have pros and cons. The first option is to file directly with the China National Intellectual Property Administration (CNIPA), which is the national route. The second option is the international route – filing the application with the World Intellectual Property Organisation (WIPO), based on the Madrid Agreement and Madrid Protocol. This checklist sets out key factors to consider when choosing between the two routes.
While any foreign entity or individual can file a trademark application in China, the applicant’s name and address must be translated into Chinese to do so.
Applicants filing via the international route should have a basic application or registration in a signatory state or organisation to the Madrid Protocol. The applicant should:
- be a national of the signatory state;
- be domiciled in the signatory state; or
- have a genuine and effective industrial or business premises established in the signatory state or member state of a signatory organisation.
Foreign applicants should entrust a qualified Chinese agent to file their national trademark application, to whom all official documents should be addressed.
The applicant – or its agent – can file the application directly with the local IP office or WIPO, but it cannot appoint a Chinese agent specifically for this purpose. WIPO will forward most official documents to the applicant or its local agent. The CNIPA will mail documents (eg, a notice of non-use cancellation or notice of an invalidation action against the registration) directly to the applicant or local agent, both of whom should respond before the specified deadlines.
Application and registration date
There will be an application date, a publication period for opposition and then a registration date – should no opposition be raised or dismissed by the CNIPA.
For the international path, the application date is the registration date. The application will proceed to registration if it meets no refusal from the CNIPA or third-party opposition.
Goods and services
In principle, goods and services items should be consistent with the Nice Classification. The examiner will exercise their discretion to ascertain whether a non-standard item is acceptable, and if it is not, the CNIPA will issue a notice requesting the applicant to make amendments. If they do not receive a response by the deadline or the newly amended item is still deemed unacceptable, the whole application will be refused.
In absence of a notice for amendment, the applicant may only delete a limited number of goods or services, without change or even limitation of the goods/services.
Prior to examination, the CNIPA will translate the goods or services into Chinese but the scope of protection should be subject to the goods and services recorded with WIPO.
The CNIPA displays more flexibility when accepting non-standard goods or services from Madrid applications. It rarely challenges their descriptions unless they are categorically unacceptable in China – for example, retail and wholesale services, gambling services or virtual currency. In cases where the applicant is (or will be) offering goods or services that are not listed in the Nice Classification, it is recommended to file a Madrid application.
Moreover, applicants can rephrase the description of its goods or services so long as the rephrasing does not exceed the scope of its original items. This comes in handy when applicants are negotiating coexistence agreements or wish to avoid conflict with prior trademarks.
In practice, some applicants hoping to broaden the protection scope of their trademarks resort to labelling the goods with headings from the Nice Classification (eg, “apparel, footwear and hats” in Class 25). Given that the CNIPA will relegate the goods into specific subclasses, applicants are advised to avoid using class headings in this manner.
If the goods or services are not acceptable in China, the CNIPA will issue a refusal notice but the applicant can choose to file a review of this refusal.
Examination periods for national and international applications are roughly the same. Under current practice, it takes about four months for the CNIPA to complete the formal process.
A national application that passes examination is published for opposition for three months. In the absence of opposition, it proceeds to registration. A smooth, non-turbulent application process allows the applicant to obtain the registration certificate within 12 months from filing.
The applicant may apply for issuance of a registration certification upon expiration of the refusal period, namely 12 or 18 months from the date of notification by WIPO to the relevant signatory parties.
Filing requirements for non-traditional trademarks
Applicants should submit all required documents together with the application form in the first filing.
Applicants filing for an application of 3D, colour combination, sound, collective or certification trademarks should submit the necessary documents (eg, trademark drawings, representation, rules for use and management) to the CNIPA within three months of filing. Failure to submit the necessary documents within this time period will result in the refusal of the application.
Possible actions in partial refusal
The applicant first needs to file a divisional application if it wants approved goods to proceed to publication and registration while it files an appeal challenging the partial refusal decision.
When a Madrid application encounters partial refusal, the approved goods or services will proceed to registration, regardless of whether a review of refusal is filed by the applicant.
If a national application passes the preliminary examination, it will be published. If no opposition is filed within three months of the publication date, the application will proceed to registration.
A Madrid application, prior to substantive examination from the CNIPA, goes through a three-month opposition period, starting from the first day of the month following the trademark’s publication in the international Trademark Gazette. In the case of opposition, the CNIPA will notify the applicant through WIPO by issuing a provisional refusal notice – the applicant may respond to the CNIPA directly. As there is no separate publication for opposition in China’s Trademark Gazette, some applicants opt to file via the international route to lower the risk of opposition.
The CNIPA issues electronic registration certificates for national registrations.
The international registration certificate is not legally binding in China. The applicant needs to file an application for registration certification with the CNIPA upon expiration of the refusal period, 12 or 18 months from the notification date by WIPO to the relevant signatory parties.
Applications for renewal, change of registrant name or address, assignment, deletion of goods and cancellation against a national registration should be filed with the CNIPA directly. Application for renewal of a national registration may be filed within one year prior to the expiry date of the registration period.
Applications for renewal, change of registrant name or address, assignment, limitation of goods and so forth of a Madrid registration should be filed with WIPO, but the examination will be conducted by the CNIPA.
For renewals, WIPO usually notifies the CNIPA of the application as it nears the expiration of the registration period – the registrant is unable to obtain a renewal certificate prior to expiration, which can create a time gap and pose a hindrance to the registrant’s enforcement actions in China.
Applicants can access the CNIPA’s online database to stay abreast of the application’s status.
The information available in the CNIPA’s online database is far less thorough and accurate, and WIPO’s online database does not have all the information for trademarks in China.
Stability of registration
If the basic mark (upon which a Madrid application was filed) is cancelled or invalidated within five years of the application date, it will affect the registration’s stability in the relevant countries. The applicant can apply to turn the Madrid registration into a national application, within three months of the registration’s cancellation.
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