A Guide to the Chinese Trademark Registration Process – Part 1

Chinese articles series. Article 1 of 3.

 

When a trademark application is filed, the China Trademark Office (CTMO) will review the application. Then an official receipt will be issued (usually takes about 15-30 days for the official receipt to issue). The CTMO will then take a substantial examination which will last about 8 months. If everything goes smoothly, we will receive a preliminary publication notice within 9 months from the application date. After 3 months’ opposition period, the trademark will be approved for registration. The whole process is about 12 months in total.

 

Procedure and Timelines

Obtaining official receipt: around 15-30 days;

Obtaining the notification of publication: around 9 months;

Obtaining the notification of registration: around 12 months;

Obtaining the hard copy of the registration certificate: around 14 months.

 

China is a “first-to-file” country, unlike Canada or USA. It means that the first person to file a trademark application will generally have priority over a prior user of the trademark. In China, applications can be filed and registered without evidence of use.

 

Below is what should be done before filing a trademark in China:

 

1: conducting a trademark search

The CTMO official website provides free search service. A more comprehensive search is charged most of the time by a Chinese trademark attorney. Never use any online commercial database to conduct the search. It is not reliable.

 

Step 2: confirm how the trademark will be filed

A word trademark or a logo trademark make the result quite different. Generally, we always suggest to file the way it is actually used. Or, if budget is not of concern, file two separate trademarks with the two different forms. A word mark guarantees the broadest protection and a combined logo mark shows the genuine use avoid of possible non-use cancellation.

 

Step 3: confirm the goods/services

China trademark classification system is based on the International NICE classification system but with some changes. China has developed a sub-classification system for each of the 45 classes.  The goods/services in each class are divided into several subclasses according to their function and/or raw materials and sales channels while services are divided based on their content and target consumers.  Generally goods falling into the same sub classes are considered similar to each other.  Likewise, goods falling in different sub classes are not considered similar.

The sub-classification system not only means that goods/services are further categorized into different sub-classes of the main class heading, but all goods/services applied for have to comply with the goods/services listed in the Chinese Sub-classification Book.  If the goods/services applied for are not specifically listed they are likely to be rejected.  Unfortunately, unlike many other countries, this often means selecting goods/services that are “closest” to the specific goods of interest – as the list is somewhat limited.

 

This is why we always modify your selected items of goods/services. Actually, you can also stick to the non-standard items if you don’t mind receiving a possible office action. There is still a chance for the non-standard item to be accepted by the examiner. If not, an office action will be issued to modify the specification. It will a) delay the examination period for around two months and b) additional cost may be charged.

 

In addition, as additional fee will be charged for items in excess of 10, we usually suggest you to limit the items to 10 per class.

 

Step 4: confirm the name and address of the applicant both in English and Chinese

The name and address of the applicant must be strictly identical to those of the company incorporation certificate or the passport of individual applicant.

The Chinese translation of the name and address is a compulsory requirement. If you do not have one, ask me and I will help to translate.

 

Step 5: prepare the required documents

When all of the above all confirmed, I will send a power of attorney for your sign. Here are all the documents required for the application:

 

Document 1. Application Form (not required by online application);

Document 2. Scanned copy of the Power of Attorney (POA) signed by the applicant;

Document 3. Scanned copy of the applicant’s certificate of incorporation / certificate of good standing; (passport for individual applicants).

 

When all the documents are prepared, your trademark is ready to be submitted.

As China is a first-to-file country, a prior application date means a lot for a trademark registration process in China. Your trademark will usually be filed within 2 working days.