With the recent revisions to the PRC Trade Mark Law that
took effect on May 1 2014, it's helpful to review some best
practices in China trade mark prosecution, particularly in
light of changes in TMO practices following the revisions to
the law. Trade mark squatting in China remains rampant, and for
companies big and small, it often is a matter of time before
your brand is pirated. Filing trade mark applications is
usually less expensive than filing trade mark oppositions or
buying brands from pirates. So it's best to file early, and
well before launching a brand in the PRC.
If there are no plans to sell in China, but there are plans
to produce there for export to other markets, registration can
help avoid the risk of interruptions in supply created when a
pirate registers the mark.
When filing, it is also best to include a broader range of
goods and services than you might in other countries. This will
again help to preempt pirates from filing for goods of lesser
concern, and save costs that would otherwise be spent filing
Under China's first-to-file regime, trade mark owners are
permitted to apply for as many goods or services as they
POAs and certificates of incorporation
The PRC Trade Mark Office recently amended its policies in
two key ways.
First, each application must be accompanied by a separate
power of attorney (POA). By contrast, under prior practice,
local agents could submit a simple copy of an original.
To minimise the administrative burdens and delays in filing,
applicants can give their local IP lawyer a general POA
authorising them to execute POAs on their behalf for each
The TMO also recently began requiring foreigners to submit
documentation at the time of filing confirming their existence.
This requirement has always existed in law, but was not
enforced against foreigners.
In the case of companies, this will normally be the
certificate of incorporation or certificate of good standing.
In the case of individuals, presenting a copy of a passport or
other government-issued identification can satisfy the
requirement. Simple copies are sufficient, and there is no need
for notarisation or legalisation.
Multi-class applications – worth trying?
Applicants are now allowed multi-class trade mark
applications (one application covering multiple classes). In
other countries, multi-class applications allow for reduction
of costs and administrative hassles. However, it has now become
clear that the cost of first-filings and renewals for
multi-class applications remains the same as under the prior
Further, the revised law does not allow applicants to divide
multi-class applications except when applications are partially
rejected during prosecution. Consequently, if a multi-class
application is partially opposed after gazettal, it is not
possible to request division of the application in a manner
that would allow for prompt registration of the mark for goods
and services not targeted in the opposition. Thus, an
opposition would result in substantial delays in
protection–at least one year, if not longer.
The regulations also do not provide for division of a
multi-class trade mark in cases where the owner wishes to
assign a portion of the mark to another party.
On August 20 2014, the TMO issued a notice suggesting that
new regulations may eventually be issued to permit the division
of multi-class trade marks for oppositions and assignments.
However, it remains unclear when, if ever, these regulations
will be issued. Thus, for now, brand owners should consider
these potential risks before deciding whether to file
Chinese-language trade marks
China has a vast consumer market and the native language of
these consumers is Chinese, not English or another foreign
China's consumers will more frequently refer to foreign
brands by their Chinese name. If the brand owner does not
supply a Chinese name, local distributors and consumers
themselves will in most cases invent one – or possibly
more – Chinese equivalents. In some cases, pirates or
the brand owner's own distributor will register the Chinese
brand, thereby requiring the trade mark owner to either
purchase the mark or pursue expensive oppositions or
cancellations. It is therefore advisable to develop, register
and use a Chinese-language brand early on.
There are many options for developing Chinese trade marks.
They can be a direct translation of the foreign brand, a
transliteration approximating the sound, a word that
corresponds to the logo used with the foreign word mark, or
none of these. The process of developing a Chinese brand is a
Regardless of the mark selected, the candidate should be
cleared not only to ensure the mark is available for
registration, but also to ensure that its pronunciation in the
main Chinese dialects does not carry a bad connotation. These
dialects include Mandarin, Shanghainese, Cantonese and
If the brand owner has not yet adopted a Chinese brand, it
is advisable to first conduct searches of trading platforms,
such as Taobao.com, to verify if distributors are already using
a Chinese brand. Consideration could be given to adopting that
brand (assuming it is suitable and not already registered by
others). Or, if it is not deemed desirable for any reason, a
new version can be introduced, with efforts then taken to
ensure unauthorised resellers adopt it.
Pre-existing unregistered marks
The latest amendment to the PRC Trade Mark Law explicitly
allows parties that have used a particular mark to continue
doing so even though another party later registers the mark for
conflicting goods. Specifically, Article 59 provides: "[w]here,
before a trade mark registrant applies to register a trade
mark, another is already using in respect of the same or
similar goods a trade mark that is the same as or similar to
the registered trade mark and has a certain influence, the
registered mark's exclusive rights holder has no right to
prohibit such user from continuing to use the trade mark within
the original scope of use, but may request that the user add an
appropriate distinguishing mark."
It remains unclear for now just what limitations will be
imposed on the prior user of an unregistered mark, for example
whether it may be required to refrain from selling products
outside its current geographic scope, beyond the current
It also remains unclear whether the owner of a trade mark
registration can require the addition of a "distinguishing
mark", given that Article 59 only gives it the right to
The above uncertainties merely underscore the importance of
filing for trade marks early.
However, Article 59 offers trade mark owners that have been
selling in China but whose marks have been pirated some solace
that they may continue selling. As such, Article 59 may give
victims of piracy some additional ammunition when negotiating
purchases of their rights back from pirates.
SIPS Hong Kong
Cyberport 1 - 1010
100 Cyberport Road, Pokfulam
Hong Kong SAR
Tel: +852 2866 6400
Fax: +852 2866 6408