Trademark Registration in China
Under the Trademark Law of the People's Republic of China, amended in 2019, and its implementing regulations, the principle of ‘first-to-file’ is strictly adhered to. This principle mandates that the first party to file a trademark application will, upon registration, obtain exclusive rights to the use of that trademark in connection with the goods or services specified in the application. In accordance with this provision, only the holder of a duly registered trademark can claim administrative or judicial protection against counterfeits in China. Consequently, successful navigation of the trademark registration process is crucial for securing these exclusive rights.
For complete protection of the trademark it is advisable to file, in addition to the trademark in Latin letters, the Chinese transliteration and the sound Romanization of the adopted Chinese characters (pinyin). As for example, in case of the distinctive sign “Ferrari”, it would be advisable to file and register three trademarks:
1) in Latin letters: “Ferrari”
2) in Chinese characters:“法拉利”
3) in pinyin version: “Falali”
When registering a trademark in China, several considerations must be taken into account to ensure the trademark aligns with Chinese regulations and standards. Trademarks consisting of sounds and/or smells are not allowed in China, a trademark must be a visible trademark. It is also required to determine the product category (Nice Classification) within which a trademark will be registered and its area of coverage and protection. This information must be declared in the registration application. Subject to the limits of trademark protection within the area identified by its product category, the trademark must also comply with Chinese laws and restrictions.
The procedure of trademark registration includes completing a set of forms and providing a detailed description of the goods to be protected. It is necessary to provide a Chinese translation within the application, including the Chinese translation of the data concerning the applicant. Please note that, according to Chinese laws, the trademark is subject to any law, regulation or treaty between the applicant’s country of origin and China, as well as any other law or international treaty applicable to both countries.
If a trademark has been first registered in another country, it is allowed to have a right of priority in China (six months from the filing date in foreign country). The certified copy of the original registration application issued by the competent authority in the applicant’s country of origin must be filed with the China Trademark Office (CTMO) along with the registration application.
The trademark registration application is first submitted for a preliminary check (verification of the documents authenticity) followed by a substantial control. Once passed the preliminary checks, the Trademark Office will issue a request for registration, which, if not opposed, will be registered according to the time required by law and changeable depending on the workload of CTMO. At present, it takes about two years from the filing date to the effective completion of the trademark registration in China.