Who may apply for a trade mark?
According to China Trademark Law, any natural person, legal person,
or other organisation that needs to acquire the exclusive right to the
use of a trade mark for the goods it or he or she produces,
manufactures, processes, selects, or markets can file an application for
trade mark registration. In practice, if a Chinese individual wants to
file a trade mark application, he or she should submit a business
license of individual business operation, otherwise such application
will not be accepted. This requirement does not apply to foreign
What is the scope of a normal trade mark?
The scope of a trade mark is defined by its designated goods or
services according to the class and subclass covered. A registered trade
mark can enable its owner to prevent or stop others from registering or
using the same or confusingly similar trade marks with the same or
similar goods and services. If a trade mark is well-known in China, it
can also prevent or stop others from registering or using same or
confusingly similar trade marks with dissimilar goods and services. The
recognition of well-known trade marks is conducted on a case-by-case
What time constraints are there on registering a trade mark?
There is no time constraints for filing a trade mark in China.
Whether the trade mark is filed before or after being used in China will
not affect the examination over the application. There are possible
official deadlines during the prosecution of trade mark application, for
example, during the formality examination stage, if the TMO issues a
notification of amendment, the applicant should respond within 30 days
from receipt of the notification; during the substantial examination
stage, if the TMO issues a notification of rejection or partial
rejection, the applicant would have a deadline of 15 days from receipt
of the notification in order to file a review over refusal to the TRAB;
after the trade mark application is preliminarily approved and published
on the official gazette, anyone can file an opposition against the
trade mark application within the three month publication period.
How long does registration take and what are the standard costs?
It takes around 12-18 months from filing the trade mark application
to its approval for registration where there is no office action and
everything goes smoothly; the official fee for filing one trade mark
application in one class is CNY1000 (roughly equivalent to $167), and
there may be additional fees if the designated goods or services are
more than ten.
How are trade marks classified?
Goods and services are classified according to Chinese Classification
which is primarily based on Nice Classification (10th edition) but with
slight modifications by the China Trademark Office. In each class,
there are subclasses, which further divide the goods and services, and
usually those in the same subclass are considered similar and those in
different subclasses are considered dissimilar with exceptions as
explicitly stated in the note in the Classification. In some subclasses,
the goods and services are further divided into paragraphs, and the
rules of determining similarity among different paragraphs in the same
subclass are determined also by the note in the Classification.
Is there anything in particular about the examination process that applicants should be aware of?
There are two stages of examination, the formality examination and
the substantial examination. In the formality examination, the examiner
is quite strict over the naming of the designated goods and services,
and may issue office action if any item is not standard; as for the
substantial examination, to reduce the risk of being rejected due to
prior similar marks, it is suggested to conduct a pre-filing search.
Besides, as mentioned above, the official deadlines in China are always
very short and non-extendible, which requires the applicant to react
very quickly once receiving an office action.
What constitutes use of the trade mark? When must this be demonstrated?
Trade mark use over goods may include: 1) using the trade mark on the
package, container, label, specification, product brochure of the
products; 2) using the trade mark on documents related to business
transaction of the product sales, such as contracts, invoices, receipts,
bill of lading, import/export certificates, Customs documents; 3) using
the trade mark in radio broadcast, TV or other media, or on the
distributed publications with legitimate authorisation for promotion
purposes; 4) using the trade mark on advertisement boards, post
advertisement or other types or advertisement; 5) using the trade mark
in exhibition and expo. Trade mark use over services may include: 1)
using the trade mark on brochures, sign board, decoration, menu, fee
schedule, coupon, stationery, letter paper; 2) using the trade mark on
documents related to the services, such as contracts, invoices,
receipts, bill of lading. Only when a third party files non-use
cancellation against the trade mark registered for three years, the
registrant needs to submit use evidences in order to overcome the
When is a trade mark considered descriptive?
If a trade mark only and directly describes the quality, main
material, function, purpose, weight, quantity or other characteristics
of the designated goods or services, it will be considered descriptive.
When is it considered generic?
If a trade mark only and directly bears the generic name, shape or
model number of the designated goods or services, it will be considered
What aspects of a mark can be considered objectionable or immoral?
According to Article 10 of China Trademark Law, the following signs
cannot be used or registered as trade marks: 1) those identical with or
similar to the State name, national flag, national emblem, military
flag, or decorations, of the People's Republic of China, with names of
the places where the central and state organs are located, or with the
names and designs of landmark buildings; 2) those identical with or
similar to the state names, national flags, national emblems or military
flags of foreign countries, except when the foreign state government
agrees otherwise on the use; 3) those identical with or similar to the
names, flags or emblems or names, of international inter-governmentaI
organisations, except that the organisations agree otherwise on the use
or that it is not easy for the use to mislead the public; 4) those
identical with or similar to official signs and hallmarks, showing
official control or warranty by them, except that the use thereof is
otherwise authorised; 5)those identical with or similar to the symbols,
or names, of the Red Cross or the Red Crescent; 6) those having the
nature of discrimination against any nationality; 7) those having the
nature of exaggeration and fraud in advertising goods; and 8) those
detrimental to socialist morals or customs, or having other unhealthy
Are there grounds for registering as a geographical indication?
The geographical names of the administrative divisions at or above
the county level and the foreign geographical names well known to the
public shall not be used as trade marks, but such geographical terms as
have other meanings or are a part of collective marks or a certification
mark shall be excluded. Where a trade mark using any of the
above-mentioned geographical names has been approved and registered, it
shall continue to be valid. Where a trade mark contains a geographic
indication of the goods in respect of which the trade mark is used, the
goods are not from the region indicated therein and it misleads the
public, it shall be rejected for registration and prohibited from use;
however, any trade mark that has been registered in good faith shall
Can three-dimensional or other unconventional marks be registered?
Three-dimension marks and colour-combination marks can be registered
in China. Other types of unconventional trade mark such as sound, motion
or smell are not registrable under the Trademark Law of China.
What constitutes a well-known mark?
The following factors shall be considered in determining whether or
not a trade mark is well-known: (1) the degree of public recognition in
its trading areas; (2) the duration in which it has been in use; (3) the
duration and extent of its advertising, and the geographical areas that
the advertising has covered; (4) the records of protection it has
gained as well-known trade mark; and (5) other factors serving to make
Can you trade mark a personal name?
If a trade mark registration will cause damage to the name right of a
third party, such a trade mark shall not be registered. In practice,
when determining the possibility of causing damages to the name right of
a third party, the degree of public recognition of the person will be
taken into consideration, such as names of celebrities.
How can a mark be amended?
The specimen of a trade mark cannot be amended once it is filed for
registration; the designated goods or services can only be amended when
the TMO issues the official notification of amendment requesting the
applicant to amend the goods or services, whereas in other
circumstances, the applicant can only delete goods or services from the
application or registration; the applicant's name and address can be
amended by filing the application for modification of name and address
of trade mark applicant to the TMO.
How do you appeal against a denied application?
If a trade mark application is rejected (or partially rejected) by
the TMO, the applicant can file a review pleading to the TRAB within 15
days from receipt of the notification of rejection, and can submit
supplementary materials to the TRAB within three months from the filing
date of the review pleading. The TRAB will then examine the review and
make a decision on whether the trade mark can be approved (or partially
approved) in around 6-12 months. If the applicant is not satisfied with
the TRAB decision, it can further appeal to Beijing No 1 Intermediate
Court for administrative litigation over the TRAB decision, if either
the applicant or the TRAB is not satisfied with the court decision of
1st instance, it can further appeal to Beijing Higher Court for the 2nd
instance, which decision would be the final one.
How do you oppose another's application?
Once a trade mark is preliminarily approved and published on the TMO
Gazette, anyone can file opposition against it within three months to
the TMO. After the opposition application is filed, the opponent may
submit supplementary materials to the TMO within three months from the
filing date of the opposition; then the TMO will notify the applicant of
the trade mark to respond to the opposition within 30 days, and the
applicant (or opposed party) may submit supplementary materials to the
TMO within three months from the filing date of the response. Then, the
TMO will make a decision on whether the opposed trade mark should be
rejected or registered. If either the opponent or the opposed party is
not satisfied with the TMO decision of opposition, it can appeal to the
TRAB for an opposition review; and then the TRAB decision could be
further appealed to the court for two instances.
When is a mark considered to be used in bad faith?
If the applicant of a trade mark knew in advance that this trade mark
belonged to another company, such as there being previous business
cooperation between the two, such registration is considered bad faith.
When must registration be renewed and at what cost? How is a trade mark lost?
Renewal can be filed within the period from six months before the
expiry date to six months after the expiry date; if no renewal is filed
during this period, it will be considered abandoned. The official fee
for one trade mark renewal of one class is CNY2000, and if the renewal
is filed within the six months after the expiry date, which is called
the grace period, an additional official fee of CNY500 will be incurred.
How are trade marks jointly owned, transferred or assigned?
Two or more natural persons, legal persons, or other organisations
may jointly file an application for one trade mark with the TMO. To
assign a trade mark, the assignor and assignee shall sign an assignment
agreement and jointly file an application to the TMO. After the
assignment of a trade mark is approved, it will be published. The
assignee shall enjoy the exclusive right to the use of the trade mark
starting from the date of the publication.
What are the different avenues for infringement? What is the procedural format and timing for each?
1) AIC action: the procedure may vary from city to city, but usually
after the complaint is received, it takes around 3-6 months to be
completed; 2) civil or criminal litigation to the court: usually takes
1-1.5 years for each instance; 3) Customs seizure: after notifying
Customs to seize the imported or exported products which are suspicious
for infringement, the applicant needs to pay the bond, and initiate
litigation at local court.
How can counterfeiting be contested?
The defendant of a trade mark infringement litigation can make the
following defences: 1) dissimilarity of trade marks; 2) dissimilarity of
goods or services; 3) low likelihood of confusion; 4) invalidity of the
trade mark right; 5) descriptive use, non-commercial use.
What rules cover passing off or unfair competition?
Anti-Unfair Competition Law.
Is parody considered a valid defence?
Usually parody cannot serve as a valid defence in trade mark
infringement litigation, but it also depends on the specific situation
of the case. The court may consider factors such as whether it
constitutes commercial use of the trade mark, whether consumers may be
misled or confused, whether such use may dilute or defame the trade
mark, and whether such use may unfairly take advantages of the trade
How about descriptive use, fair use or use in good faith?
Usually, descriptive use can be considered a valid defence in trade
mark infringement litigation; whereas, there is no clear definition of
fair use or use in good faith under China Trademark Law or relevant
regulations. If a party has been using a trade mark without registering
it, and another party registers a same or similar trade mark in China,
the earlier user cannot continue its use nor successfully defend itself
in the trade mark infringement litigation that it had earlier use,
unless it files dispute cancellation against the other's trade mark
registration and requests the court to suspend the litigation in wait of
the decision by the TRAB over the dispute cancellation.
What is it worth conducting a survey to provide evidence of reputation?
A public survey may serve as one of the evidences to prove the
reputation of a trade mark in China, but considering that there are many
factors influencing the possible result of a survey, it alone is not
enough; other evidences such as the scope and extent of sales and
advertisement are also important.
How do you appeal in enforcement situations? What other remedies are available?
Either party not satisfied with AIC decisions can appeal to the
court; either party not satisfied with first instance court decisions
can appeal to the court at a higher level.
What arrangements are there available for trade marks in bankruptcy?
In the procedure of bankruptcy, trade mark as a kind of intangible
property of the company is vested in the liquidator and may be sold or
auctioned with other properties. The new owner of the trade mark shall
conduct the assignment recordal to the TMO in order to transfer the
trade mark right. The procedure of such assignment recordal is same as
ordinary assignment between two parties, and after the assignment of a
trade mark is approved, it will be published. The assignee shall enjoy
the exclusive rights to the use of the trade mark starting from the date
of the publication.
How does this jurisdiction interact with other international treaties?
China is a signatory to the Paris Convention, and is also party to
the Nice Agreement of classification of goods and services, as well as
the Madrid Agreement and Madrid Protocol.
Gloria Wu received her law degree from Beijing Foreign Studies University School of Law in 2005. She has also received training in international finance law and intellectual property law at DePaul University College of Law in the United States. Wu joined Kangxin Partners in 2005 as an intellectual property attorney.
Wu’s practice focuses primarily on the areas of trade mark, copyright, and domain names. She is highly experienced in all IP-related litigation, administrative actions, customs enforcement, and IP strategy consulting. As a leading member of the trade mark department, she has helped many large companies establish and improve their trade mark strategy and management systems, and has successfully resolved many complex legal disputes.