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The importance of registering a trademark in China is often overlooked and sometimes ignored by foreigners.
Many are unaware about the fact that China is a first-to-file country, which simply means that the person who register the trademark first, will get all the rights to distribute and sell the products.
There are many pitfalls you need to avoid when registering a trademark, it’s also important that you know about the process when registering one.
How high are the costs? How long time does it take? I can make the list longer.
In this article, I explain the crucial information you need to know when registering a trademark in China.
Why should I register a trademark in China?
Applying for a trademark is a crucial and an important step that’s often ignored or overlooked by exporters.
China is a “first-to-file” country which means that the person who registers a trademark for a product, will also have all exclusive rights to distribute and sell the product.
You won’t, unless you register the trademark first.
The fact is that it’s practically impossible to engage in the Chinese market long term, without registering your trademark.
Trademark registration is often required by e-commerce sites and distributors
Not only do many Chinese e-commerce websites require that you register your trademark overseas (and in China). If you plan to sell via a local distributor, they will request you upfront to register your trademark, before any trading takes place.
Why is that?
Because you can’t license your products to a distributor without having your trademark (brand) registered in China.
You should also be careful with distributors who insist to register your trademark for you, might it be out of good will, or not.
Worth mentioning is that you won’t have anything to say in case a Chinese individual decides to sell your products, without your consent. How can you prove that someone has infringed on your brand, when it’s not even registered?
You can’t claim something that can’t be demonstrated to be yours.
In China, there’s even a word called “trademark squatters” for persons who actively try to register trademarks for the purpose of earning money, or to make things harder for you.
It can be everything from a competitor who wants to reduce your chances of making profits in China, to persons who file a number of trademarks for the purpose of selling these later.
Sadly, some exporters simply have to pay the fee required (sometimes stretching up to USD 250,000) to get “back” the trademark (also called bad-faith registrations).
What other choice do you have, if the remaining option is to get kicked out of the Chinese market.
Process when registering a trademark in China
When you apply to register for a trademark in China, you normally need to go through the following steps:
a. First of all, you need to check if the trademark is already registered or not (more about how you can check that later in this article)
b. Submit the application form and other relevant documents. In China, SAIC (State Administration for Industry and Commerce) is responsible to handle the applications of trademarks.
c. SAIC reviews the application and confirms whether you can proceed or if complementaries are needed.
d. SAIC starts a thoroughgoing process to register the trademark (normally takes 1 year)
e. Approves and issues the trademark (takes generally 2 months when the above process has finished)
f. You receive a certificate of approval (normally takes 2 additional months)
Registering a trademark is nothing you do in a trice. It’s a lengthy process that should be started well in advance.
How long time does it take?
The process can take everything from 12-16 months, depending on how smooth the registration process goes.
But the Chinese government works actively trying to reduce the processing time.
How much does it cost to register a trademark in China?
First of all, you generally need to pay two different parties when registering a trademark:
a. Trademark check up fee: around USD 120
b. Registration fee of the trademark for 1 class and 10 sub-categories: around USD 1000 (including fees for the services provided by the lawyer). Government fees land at around 100 USD, but these fees are normally included in the complete service package provided from trademark agencies.
If you’re willing to take on the Chinese market, registration of a trademark shouldn’t be seen as something you can neglect, risking that your products can’t be salable in China.
Can foreign companies register trademarks in China?
Fortunately, my answer to this question is: Yes.
In fact, if you’re a non-resident in China, or have a foreign company, you need to seek help from a trademark agency.
The application is made through China’s national registration system, also called CTMO (more about CTMO later in this article).
For how long is my trademark registration valid?
A national trademark registration and international trademark registration are both valid for a period of 10 years.
You need to apply for a renewal at least 6 months before expiration, it will then be renewed for additionally 10 years.
Keep in mind that if you don’t use the products for commercial purposes within a time period of 3 years, you might lose the trademark.
What happens if I don’t renew the trademark registration in time?
If you don’t renew your trademark registration in time, it will be cancelled.
Be sure to renew the trademark registration well in advance.
What happens if I get refused to use the trademark?
If you’re refused to use the trademark for some reason, your trademark agency needs to contact TRAB (Trademark Review and Adjudication board) and submit an opposition.
TRAB will handle the opposition during a time period of 9-12 months.
Can I use a foreign trademark agency for my registration in China?
No, if you’re not a resident in China or have a foreign company, you need to let a Chinese trademark agency handle the application for you.
Whilst an international registration requires that you make the application in English, French or Spanish, a national registration in China requires that the application is written in Chinese.
How should I name my Chinese trademark?
It’s important that you choose a Chinese trademark that translates well and sounds good.
Ralph Lauren is a brand which decided to not register a Chinese trademark, which resulted in that the Chinese public came up with a name themselves: San Jiao Ma, which literally means ‘three legged horse’.
Once it’s out there, it’s difficult to change.
In total, you have two options to choose among when choosing a trademark in Chinese. If you’re lucky, you might be able to use a combination of the two:
Phonetic translations means that you compose characters in a way to make the Chinese name sound similar to the English name.
Some foreign companies are lucky when coming up with phonetic names, as the name itself means something positive in the Chinese language.
For example, Coca Cola is translated as ‘Ke Kou Ke Le’, which doesn’t only sound similar to the English name, but also means “Very tasty and happy”.
What a coincidence, right?
This simply means that you choose a Chinese name that’s corresponding well to your English brand in written text, but not when it’s pronounced, nor does it have an extravagance meaning.
For example, Microsoft is translated into Wei Ruan in China, which simply means: Microsoft. However, it doesn’t bring any attributes to the positive things about the company, or have any similarities with the pronunciation.
Another example is Apple, which is translated into Pingguo that means ‘apple’ in Chinese.
Many car brands have phonetic translations. This includes Rolls Royce, translated as ‘Lao Si Lai Si’, and Ferrari that’s translated as ‘Fa La Li’.
Be sure to work with a native Chinese speaker who specializes in local marketing or PR. They can help you in the process to come up with a Chinese name that suits your brand.
Are Hong Kong trademarks valid in Mainland China?
Even if the UK transferred Hong Kong’s sovereignty to China in 1997, you can’t use your Chinese trademark in Hong Kong.
The Chinese government claims Hong Kong’s relation with China to be under a “one country, two systems” structure, something that’s applicable for the legal system, also covering trademarks.
Are US or EU trademarks valid in China?
EU-countries, China and United States are all parts of the so called Madrid Protocol, covered by WIPO (World Intellectual Property Organization).
However, trademarks registered internationally under the Madrid Protocol, are not protected globally. Even if you have a registered trademark in Germany or France, doesn’t mean you’re protected in China.
You need to make a separate (national) registration in China.
Trademark classes in China
Even if China and Europe use the same registration systems for international classification of goods and services (covered under the Nice Agreement), China has unique subclasses which aren’t used in Europe.
It’s important that you confirm what classes (there are 45 of them) and subclasses that should be used for your specific products. To be fully protected, you can use subclasses that have little relevance with your products as well.
An important point is that China has its own regulations to trademark law, mainly because the Chinese language differs with the characters and tones used.
Keep in mind that:
a. The trademark should have uniqueness and be distinctive. It shouldn’t imply on the function of the product, all in accordance with the Trademark Law
b. The trademark should be grammatically correct and concise
c. The trademark should be delightful and not pounding
How can I search for trademarks registered in China?
You can search for China registered trademarks on CTMO’s (China Trademark Office) official website. Services you can use on the website are:
a. Searching for similar trademarks
b. Get comprehensive information about different trademarks
c. The status of different applications
d. Public announcements
Many exporters know little about the importance of registering their trademark in China. In fact, China is a first to file country, which means that if you don’t register your trademark in time, someone else might, and probably will, do it.
The process to register for a trademark takes around 16-24 months, be sure to start the process well in advance. If you’re not resident in China, or have a foreign company, you’re obliged to work with a local trademark agent who will help you to register the trademark.
The cost usually lands at a bit more than USD 1000, but is negligible in comparison to the importance of registering your trademark.
If you want to know more about how you can register your trademark in China, I recommend you to read the complete article.