Information you may want to know

• Introduction of Mr. Ma Jun, Chinese trademark lawyer
• Overall procedure and requirements on Chinese trademark
• Reasons for you to consider a Chinese trademark
• How to take advantage of the “trademark hoarding” rule in China? (anti bad faith registration)
• What if your partner has registered your trademark in China?

Overall procedure and requirements on Chinese trademark by Ma Jun and his team

If you want to apply a Chinese trademark, you may understand the framework of Chinese trademark by this article.  This blog contains the most frequently asked questions I and my team meet in our daily work.

1.       Who can apply a trademark in China? And what is needed?

Any natural person, legal person or other organization may apply for a trademark for its service or product in China.  All that is needed is (1) a passport (scanned version) or certificate of incorporation (scanned version) (2) an address of the applicant.

Specifically, even if your country has no international treaty with China, you may apply with the foregoing documents.

2.       What can be registered in China?

Any sign that may distinguish your product or service with others, including words, graphics, alphabets, numbers, 3D sign, combination of colors or voice etc., and combination thereof, may be applied as trademark.

3.       What is the classification system in China?

China follows the Nice system, using international classification. If you want the English version of Chinese classification, send me a mail.

4.       How long it takes to register a trademark in China?

Smooth case: Practically it takes generally 4 months for review and 3 months for publication, 7 months in total.

One rejection: Practically it takes 4 months for first review, 7-9 months for appeal, 3 months for publication, namely 14-16 months in total. 

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

Government fees around 49 USD for each trademark application, plus our service fees 250 USD, namely 299 USD in total.  International courier fees will be taken by client if any (generally no such fees). China does not charge separate registration fees as Korea, neither does China charge fees for certificate.

6.       Does Chinese trademark require evidence of use for application as the US system?

No. 

7.       How to deal with a bad faith registration in China if I become realize my trademark has been registered by a third party in China?

Refer to our articles below:

How to take advantage of the “trademark hoarding” rule in China?

What if your partner has registered your trademark in China?

Work with 100IPservice, be more efficient and save your cost

My firm, 100ipservice (一百分知识产权) is an authorized trademark agent in China.  This is a screenshot of our qualification on China trademark office.  You may check on this link yourself (type in 一百分知识产权）.

Personally I’ve been working in the intellectual property field for 12 years.  So I and my team really understand Chinese trademark well.  Here are some points why a direct conversation with us may serve your interests:

1. You will have to work with a Chinese trademark agent anyway, direct communication will help you efficiently understand the whole procedure better and save your cost

Chinese law article 18 provides “Any foreign person or foreign enterprise intending to apply for the registration of a trademark or for any other matters concerning a trademark in China shall appoint any of such organizations as designated by the State to act as its or his agent.” (Check the trademark law by this link on Chinese government website)   Therefore any information you get from intermediary will be second handed information - direct communication will be more efficient.

If you finally have to work with a Chinese trademark agent, why you go with intermediaries to pay extra money?  Working with a local agent will obviously save your cost. 

2. Our search and consulting will be free, but with high quality

We provide free search and consulting to clients, this is a recent client I am talking with, we have 31 mails between us, but I have not charged him till now, because my firm only charge when you decide to file or take real actions:

 

3. My firm filed totally more than 10,000 trademarks in China till now, we have very good history to track

As you may see from the below screenshot, my firm have totally applied 11563 trademarks in China.

Reasons for you to consider a Chinese trademark

I am not going to say everyone needs a Chinese trademark, but if you satisfies any of the conditions below, you should definitely consider a trademark in China.

1.       If you work with an OEM partner in China, it is critical to consider a trademark

A lot of our clients work with OEM partners in China.  Some clients will register trademark in China even prior to the cooperation starts, while signing strict NNN and NDA with the partner.  But there are other clients not aware of trademark protection in China – I met several times the OEM partner registered the trademark of the client – in this case, client has to spend time and cost to initiate legal actions against the OEM partner.  Do not assume the partner will feel afraid if you threaten him you will terminate the business relationship with him, if they are the few options you have to make the products, you are the weak side.

You may say the product is made in China but directly sold outside of China.  But you need to be aware A. Chinese Supreme Court confirmed in several cases foregoing use is also infringing, thus you cannot ask other OEM producers to make your product; B. the OEM partner is the owner of the brand so he may sell your brand in China in a legitimate way.

Check if you are already facing the problem here.

What if your partner has registered your trademark in China?

2.       If you will sell your products in China, it is necessary to consider a trademark

Chinese custom will regularly check whether you have a trademark in China.  Chinese main e-commerce platforms, i.e. tmall.com, jd.com, tiktok all require trademark as prerequisite to sell.  Even the supermarkets will require trademark.

3.       If you do not want a third party to use your brand in China, it worth considering a trademark

You may be famous and successful in your country, but not in China.  In this case, registration of your trademark is legally Ok, unless you are the so called “famous trademark” in China, which is very rarely recognized in China.  So it makes sense you have your own trademark to preclude others from registering and using your trademark in China.

How to take advantage of the “trademark hoarding” rule in China?

You may receive calls or mails from Chinese trademark agents saying your trademark has been registered by an anonymous person.  I would say some Chinese applicants are crazy in applying trademarks of foreign companies that may enter China or may need Chinese manufactuers because they want to sell the trademarks to potential buyers.  But do not rush to buy the trademark till you have a full understanding of the situation.

So how to solve this kind of issue?  Back to 2018, CTMO rejected 20,000 applications filed by a series of acutally related companies because such applications are obviously lack of intention to use – we may follow this thread.  Chinese law provides the purpose of trademark application should be for use, but not for selling for money.

For foreign companies facing a “bad faith” application without authorization, it should be clear that most of the time such company may have very little, if not no business existence in China – that’s why I do not think such company has a base to prove bad faith upon the fact of unauthorization application. 

The recommended way is to analyze the trademark package of the “bad faith” applicant – usually such applicant will apply a series of trademarks at the same time, such series trademarks being trademarks of foreign companies.  In this case, foreign company may be able to prove the applicant is registering the trademark in bad faith, namely such applicants are aiming to hoarding trademarks but not to use trademark.

The trademarks of "bad faith" applicant will be invalidated in case of trademark hoarding.

China intellectual property office issues "Method to apply accelerated review of trademark application (trial version)" , but only for special cases

If you ask me whether there is a channel to accelerate trademark application in China, I would say no, in general.  CTMO tries very hard to accelerate review speed, but there is no written down rules to accelerate review.  

In the cov-19 period back in 2019, CTMO has issued some guidance to accelerate review for medical and medical instrument trademarks, but not as long term written rules, so I assume the new method is a derivative of the actions taken in the 2019.

According to the new rule, only a few instances will be qualified to be accelerated, I have done a direct translation for you to understand:

"A trademark application under one of the following circumstances may apply for expedited review:

(1) It involves the names of any of major national or provincial projects, major projects, major scientific and technological infrastructure, major events, major exhibitions, etc., and the protection of the trademark is urgent;

(2) During the period of public emergencies such as major natural disasters, major accident disasters, major public health incidents, and major social security incidents, it is directly related to the dispose to such public emergencies;

(3) In order to serve the high-quality economic and social development, it is indeed necessary to promote the implementation of the outline for building a strong intellectual property country;

(4) Others of great practical significance for safeguarding national interests, social public interests or major regional development strategies."

The new rule provides a quick review of the trademark in 20 working days.  For ordinary applicant, it is still important to apply the trademarks as early as possible since Chine applies the first-to-file system.

What if your partner has registered your trademark in China?

This is not a happy scene.  You have chosen your partner in China, wishing he will produce the best products for you to sell in China, but he registered your brand in China!

So what would be a good strategy to deal with this kind of strategy?  Here are my suggestions:

1.       Do not rush to negotiate, talk when your own application has been filed

As you have a business relationship with your partner, you may want to negotiate with him to solve the issue.  But don’t be in a rush, I would suggest you to file your own application before you talk with your partner.  The reason is clear, if you rush to your partner but the partner file new applications, you will have to deal with more than one trademark – this will increase your fees and cost on time – early filing will help you exclude this kind of possibility.

2.       In a positive case, let him transfer, not withdraw

In a positive case, your partner may agree to solve the issue.  Let him transfer the trademark to you would be better than withdrawing the trademark because there might be similar trademark filed after his trademark – a transfer will be safer.

3.       In a negative case, be prepared to fight

If your partner refuses to cooperate, then you may consider to file objection or invalidation procedure against your partner.  Chinese trademark law clearly provides you may file objection or invalidation in case anyone having business relationship or contractual relationship applies your trademark.  The whole procedure will usually take 12 months.

Anyway, applying the trademark as early as possible is still the most recommended option.  But if you are facing the situation, in most of the time, talk with me, the issue could be solved.