Topics
Ownership: Costs, Benefits, and Usage
Registrations: Applying for, Losing the Trademark
Infringement: Penalties and Unregistered Mark Protection
Opposition & Protection from Bad Actors
Licensing your China Trademark
Ownership: Costs, Benefits, and Usage of the Trademark
Why should I get a trademark in China?
Getting a trademark in China is essential as it provides a number of essential protections from trademark trolls and counterfeiters. Brands that are well known among consumers should also get a trademark in order to improve their competitiveness and protect their rights. In China, getting a trademark early can stop trademark trolls and counterfeiters from targeting your business and protect your brand equity value. Additionally, you can request police investigate possible infringement if you own a China trademark registration.
Even if you are not selling in China yet, you may already see resellers on Taobao selling your product and attracting interest from consumers. The customs office will also seize infringing goods and notify you of an opportunity to enforce your rights as a China trademark owner. Overall, a trademark registration can be used to prevent dishonest businesses from confusing consumers in order to leverage your brand equity on inferior products, which can be damaging to your brand’s image in China.
How much does it cost to trademark in China?
The trademark registration fees vary by the type and number of marks registered:
Ordinary Trademarks: 300 CNY, covering all fees for a 10 year period, which is available for entities or individuals designated “domestic,” and can include a foreign company using a proxy agreement to qualify as Chinese. (see Foreign Investment Law).
Ordinary Trademark via Trademark Agent: CNY 1,600, which is the route typically required for a foreign company, and also covers all fees for a 10 year period.
Collective Marks & Certification Marks: CNY 3,000 per mark, which has been used for many geographical indications, covering all fees for a ten year period.
How long do Chinese trademarks last?
A trademark will remain valid for 10 years from its registration date. A trademark owner can continue to use the trademark after the validity period by completing trademark renewal procedures.
The trademark renewal should be filed during the six months preceding its expiration. If you are late, there is also a six month grace period. Otherwise, the trademark will be voided after the grace period expires. A renewal lasts for ten years. Successful renewals will be published in the trademark gazette. In practice, the trademark office will accept your renewal filing if made either six months before or after the trademark expiration date.
These twelve months are usually referred to as the renewal period. A late fee is required for trademark renewals filed during the grace period on top of ordinary renewal fees. Note that the ten year validity period for the trademark is calculated from the next day after the expiration date, and not from the filing, approval, or gazette publication date.
What is the trademark symbol in China that I should use?
China has six common ways to apply a trademark symbol. Chinese administrative regulations authorizes use of the Ⓡ symbol in Section 36. However, many businesses also use ™ or simply use the plain text “R”， “TM” letters to denote they are trademarked. Practitioners believe since this is industry custom, that Section 66 authorizes these marks.
The final two authorized methods are to use the Chinese words for “Registered Trademark” (注册商标) or “Registered Logo” (注册标记), as provided by the Trademark Act Section 9.
International businesses will likely find denoting trademarks with the Ⓡ symbol the easiest approach.
Registration: Applying, Proving, and Losing the Trademark
How is a Trademark Registered in China?
Before filing a registration application, you need to determine the mark’s classification then search for existing marks. The mark’s classification needs to be determined following China’s official classification table and not an international classification system. Then, run a trademark search to see if there are conflicting marks that could result in the application should be refused. You should revise the trademark application before filing it.
Once the forms are filled, the trademark will be filed by an agent with the trademark office. The application package will include the trademark application form, the party’s verification documents, and an authorization letter for your trademark agent. An agent is required for international businesses, unless designated a domestic Chinese company under the foreign investment law. Next, the trademark office will receive the application for examination. An initial examination will be performed to see if the application has been filled out as required by the trademark office rules, and primarily looks at names, addresses, drawings, and the designated goods and services. A substantive examination will look for offensive or politically incorrect marks, conflict with a prior user’s mark, and whether the mark is the same as or similar to an existing mark.
A successful examination is followed by publication. An opposition can be filed by a prior user or interested party within the first three months of publication. Finally, an unopposed mark can will be approved for registration. When the trademark office issues approval for registration, it will also send you a trademark registration certificate.
Does China require intent to use or evidence a Trademark was used?
Evidence of actual use or intent to use a mark is not required to register a trademark in China. Instead, the primary criteria for granting trademark registration is the distinctiveness of the trademark. The China Trademark Act states the purpose of registration is to ensure a mark can be distinguished from others and to prevent others from infringing on a business’s intellectual property rights. Therefore, any distinctive mark that complies with the applicable rules can be registered, as use is not the primary criteria for trademark registrations. However, proof of actual use may be required in certain cases. Marks associated with certain contexts such as museum or art shows are often required to provide evidence that the mark is actually used. The rationale given by the trademark office for requiring proof of use in these contexts is that special settings involve great quality and reputation.
What is the Chinese trademark classification system?
The China Similar Goods and Services Classification Table is issued by the trademark office so that examiners, agents, and applicants can determine which category a good or service falls under for trademark purposes. In addition, other administrative agencies, prosecutors, and courts apply the Table to trademark cases.
What China’s nonuse period for trademarks?
Three years–specifically, a cancellation filing showing good cause can be filed by any individual or organization against a trademark that has not been used for three years without legitimate grounds. The trademark office will then notify the registrant they have two months with which to furnish either proof the trademark was being previously used, or to explain the legitimate grounds for non-use. The trademark will be revoked by the trademark office if the owner does not provide those answers by the deadline. The usage evidence can be either the trademark owner’s own use of the mark, or the use that an agent or licensee made of the mark.
The trademark cancellation filing must be made no sooner than the third year after that trademark’s registration was published in the official trademark gazette, and the non-use without legitimate grounds must have persisted for three consecutive years. In summary, you can request an unused trademark be revoked after three years, unless unusual circumstances were present. For more authoritative information, see our translation of the Chinese government’s authoritative guidance on cancellation petitions.
Is there anything else that could lead to a trademark registration refusal?
Yes, the Trademark Office will reject any trademarks that are immoral, offensive, politically incorrect, or disrespect Chinese culture. In-depth treatment is available in our guide on Politically Incorrect Trademarks.
Do I need an attorney to file a trademark application?
In China, you do not need a trademark attorney to file for a trademark registration, and it is common to use just a trademark agent. However, China’s trademark laws are very complex and have a high rejection rate of about 40%; therefore, hiring a lawyer can help ensure that the trademark application is legally compliant and therefore improve its success rate. Whether to engage an attorney should depend on your business needs.
Dishonesty by trademark agents is extremely common in China, therefore before hiring one you should read the PRC government’s official guidance on trademark agent negligence and your rights.
Infringement: Penalties and Unregistered Mark Protection
Are there common law trademark rights in China?
A common law trademark in China, which is a civil law system, would refer to an unregistered trademark.
For marks that are not famous throughout China, registration is absolutely required and without a registration, the law empowers trademark trolls to extort thousands of dollars from a business. For famous brands, sometimes there will be cases where they have not registered in China. Chinese law does protect unregistered trademarks that are famous throughout the country, and in the registration phase applicants are required to distinguish their mark from unregistered famous trademarks. Trademarks the same or similar to a famous mark cannot be registered.
Unregistered trademarks with significant use also qualify for protection. China’s protection for significant but unregistered marks seeks to counter counterfeiters and trademark trolls who register the marks in bad faith. The China Competition Act provides a number of new rules designed to limit the damage that trademark trolls can cause. Chinese enforcement against parties who register another business’s mark in bad faith. Now, a party who registers another business’s mark in bad faith is liable for significant infringement damages.
Is China a first to file trademark country?
Yes, the China Trademark Act adopts the first to file principle and not first to use. That is to say, whoever applies first will own the trademark. China’s first to file law provides exclusive rights to use a trademark to the first applicant. For example, if two parties file for a trademark at about the same time and the first application passes examination, the trademark office will publish its preliminary determination in the Gazette and issue a refusal to the second applicant. Therefore, you need to proactively protect your brand from squatters.
Only in highly unusual circumstances will the first to use principle apply, for example where two applicants filed on the same day for a similar mark for similar goods and services.
Does China prohibit trademark infringement?
Yes, China does prohibit trademark infringement if you have a registered trademark, however, the government may refuse to recognize a competitor’s actions as infringement. Common reasons for refusing to recognize infringement are that the public in China are not actually confused, or that the trademark is merely decorative. For a complete discussion of the hurdles you need to overcome when claiming trademark infringement, read our in-depth analysis of the subject.
China’s trademark office has also explained how they will determine whether infringement exists, which you can read in our translation of their Official Guidance.
What penalties does China impose for trademark infringement?
Typical trademark case damages range from the thousands to tens of thousands of Chinese Yuan. Trademark infringement damages are based on the party’s actual economic losses and have a floor of 1,000CNY. Often, the best option is to sue for profit disgorgement against the infringer, which entitles you to a reclaim all profits they earned from infringing.
The infringer’s gains can also be used as a basis for damages if a party’s actual losses are hard to calculate. A third option is available where these options are not feasible, and that is to determine a reasonable license fee for the trademark and apply a multiplier. Chinese law authorizes up to treble damages for aggravated bad faith trademark infringement, using the above calculations as the base number.
The damages calculation must take into account how much money was spent to stop the infringement. A trial court is empowered to demand an infringer disclose all accounting books and financial transactions documents to facilitate calculation of damages, but the victim must first make best efforts to provide its own documentation. If the infringer fails to provide such financial documentation or the documentation is falsified, a court may calculate damages solely based on the victim’s demand in light of any evidence that could be provided. As an option of last resort, if no evidence can establish a basis for calculation under the gains, losses, or licensing calculation method, the Court may award up to 3,000,000 CNY based on its view of the available evidence.
Outside the courts, damages can also be obtained against an infringer during import or export at customs. A registered trademark owner will receive notifications from customs about potential infringement, and in this case the owner will have the right to have the goods impounded at customs. If the customs investigation determines infringement actually occurred, then customs will then seize the goods and maintain an evidence file that can be referred to a trial court to impose damages.
Do famous or well-known trademarks in China qualify for protection?
Marks that are recognized by the consuming public throughout China qualify for special protection to prevent confusion, especially from counterfeiters.
Opposition & Protection from Bad Actors
How do I oppose a trademark in China?
Trademarks that have gotten initial approval for publication in the trademarks gazette may be opposed by any person during the first three months. The purpose of oppositions in Chinese law is to ensure the fairness of trademark registrations and offer transparency by allowing the general public to oversee the trademark process. Trademark Administrative Regulations Sections 24-25
An opposition involves making a lawful request to not allow final registration of a trademark that has been granted initial approval.
Typically the persons to file an opposition will be the parties in interest. The party filing an opposition has grounds to believe that the trademark published in the Trademark Office gazette is either the same as or similar to a trademark they have already registered in China. Thus, they request the Trademark Office issue a refusal to the conflicting mark on grounds that doing so is necessary to protect their own trademark rights. Any member of the general public, whether an individual or organization, is entitled to file an opposition during these first three months so long as they believe that the trademark published is out of compliance with the Trademark Act.
When filing a trademark opposition to the Trademark Office, duplicate counterparts of the filing must be presented along with the relevant evidence. The opposition filing must also include the name of the mark, classification of goods or services, initial approval number, the gazette number, and reasons for opposition. Trademarks opposed on grounds that they are identical or similar to a prior trademark must include the existing trademark’s name, classification of goods, registration number, and a sample of the existing trademark.
How can I protect my brand in China?
See CBL’s guide on how to protect your brand from trademark squatters, as this is the primary consideration.
Are there remedies if a trademark squatter or someone else has registered my mark wrongfully?
Yes, China has relatively new rules about challenging a trademark on grounds that it was registered in brad faith.
How does China determine a trademark was registered in bad faith?
A bad faith trademark application may pass examination and be published in the official gazette as a registered trademark. In this case, the true owner can file an application with the Trademark Trial and Appeal Board to revoke that trademark. There is a five year statute of limitations on revocation actions; if a trademark was registered in bad faith more than five years ago, it cannot be revoked on bad faith grounds. Appeals from Board decisions to the Beijing lower appeals court for either party. A new trademark application should also be prepared while seeking revocation of a bad faith trademark in order to ensure you can obtain the trademark. The emphasis China places on trademark registrations cannot be underestimated; registration is cheap and beneficial, and the consequences for failing to register can be catastrophic.
Learn more about bad faith:
Official PRC Guidance on Bad Faith Trademark Applications
Licensing your China Trademark
How do I license my trademark to a buyer in China?
The Chinese government says (in translation):
Trademarks can be licensed in China by both signing a license contract with the registrant, and the contract must describe basic transactional information including the license term, permitted uses, and price. After the license contract commencement date, the registrant must make a license contract filing with the Trademark Office and describe the licensor, licensee, term of license, and the classification of the goods and services. Whether the license contract is filed will not affect its validity, but it will provide rights against third parties.
Trademark licensing is very complex and the government in some cases may refuse to recognize a license, to get a better understanding of the topic, read our translation of the full government guidance on doing trademark licensing correctly.
How can I legally buy or sell a trademark in China?
You can legally transact on trademarks in China, but the legal process can be complex. Learn more with our guide: How to assign a China trademark.
Miscellaneous
Are there trademarks in China? Are they the same as in other countries?
Yes, China is a signatory of TRIPs and the Mandarin word shangbiao, is statutorily defined to be equivalent to TRIPs Agreement trademarks. but some differences in China’s trademark system have caused international companies extremely serious problems with counterfeiters. To learn more, see our comprehensive guides on Chinese trademark law.
How many trademarks are registered in China?
According to the Chinese government’s website (our translation): “China has 46,146,000 trademark registrations in effect at the start of 2024, with 4,383,000 new registrations over the past year.”
Can I get a collective mark or geographic indications in China?
Yes, China has detailed procedures for registering collective marks and geographic indications.
What is the China trademark office called?
The China Trademark Office is a government agency specialized in trademarks, housed within the National Intellectual Property Association, which is mandated by Trademark Act Section 2.
Is China part of WIPO?
According to the Chinese government’s website (our translation): “China formally joined WIPO on June 3, 1980 […] and China remains committed to its role in the organization.”