The Path to Trademark Registration: How to Register Foreign Trademarks in China

1. How can foreign trademarks be legally used in China?

According to China’s Trademark Law, foreign trademarks must be registered and authorized for use within China. Specifically, businesses need to register their trademarks with the China National Intellectual Property Administration (CNIPA) and obtain a trademark registration certificate. Only registered trademarks can be legally used in China. Additionally, businesses may opt for international registration of their foreign trademarks in China to enhance protection.

2. What issues should be considered when freely using foreign trademarks in China?

However, obtaining a trademark registration certificate does not automatically grant unrestricted use of foreign trademarks in China. Businesses must adhere to certain restrictions and regulations. First, ensure that the use of foreign trademarks in China does not infringe on others’ trademark rights. Prior to using a foreign trademark, businesses should conduct thorough research and verification to ensure the trademark is not already registered or in use by another party in China. In case of conflicts, appropriate measures should be taken to avoid infringement.

Secondly, businesses must be mindful of the scope of trademark use in China. The usage scope should align with the categories listed on the registration certificate. If a business wishes to use the trademark in other categories, it must re-register the trademark or amend the registration certificate. Additionally, businesses should comply with legal requirements regarding the manner and duration of trademark use. The usage should not contravene public order and morals, and timely renewals are necessary to maintain the trademark’s validity.

Finally, establishing an effective trademark protection mechanism is essential. In China, trademark protection is primarily achieved through registration and exercising trademark rights. Businesses should promptly register their trademarks to secure exclusive rights and actively protect their trademark rights by taking legal action against infringements. Moreover, businesses can enhance trademark protection and use through licensing and collaborations.

3. What is the process for registering foreign trademarks in China?

Trademark Search: Before registration, conduct a trademark search to ensure the desired trademark is not already registered in China. This can be done through CNIPA’s official website or professional trademark search agencies.

Trademark Application: The first step in registration is to prepare and submit the necessary documents, including the trademark application form, trademark samples, classification list, and the applicant’s identification. These documents should be submitted to CNIPA as per the prescribed procedures.

Trademark Examination: After submission, CNIPA will examine the trademark application, assessing registrability and similarity with existing trademarks. If compliant with relevant laws and regulations, the application will pass the examination.

Publication: Once the trademark passes examination, it will be published in CNIPA’s trademark gazette. During the publication period, anyone may raise objections against the trademark.

Issuance of Registration Certificate: If no objections are raised during the publication period, the trademark will be registered, and a registration certificate will be issued, granting the trademark rights in China.

4. What considerations should be kept in mind when registering foreign trademarks in China?

Priority Principle: Under the Paris Convention and the Madrid Agreement, businesses can claim priority in China based on their foreign trademark registration, provided the Chinese application is filed within six months of the foreign registration.

Trademark Translation and Transliteration: Translating and transliterating foreign trademarks to fit Chinese linguistic and cultural norms can prevent conflicts with existing trademarks.

Trademark Classification: Accurate classification of trademarks using the international trademark classification system is crucial for effective management and use.

Proof of Use: Providing proof of trademark use, such as foreign registration certificates or evidence of use abroad, is necessary for the application.

5. What legal protections are afforded to foreign trademarks registered in China?

Trademark Legal Protection: Registered trademarks enjoy exclusive rights under the Trademark Law, and owners can use legal means to protect their rights.

Infringement Pursuit: Trademark owners can take legal action against unauthorized use of their trademarks, demanding cessation of use.
Rights Protection Channels: Trademark owners can protect their rights through CNIPA and the courts in China.

6. Should Chinese translations of foreign trademarks be registered?

Given that Chinese or combination trademarks are easier for Chinese consumers to recognize, pronounce, and remember, it is advisable to register the Chinese translations of foreign trademarks for extended protection.

7. Do trademarks registered in simplified Chinese characters enjoy the same protection as those in traditional Chinese characters?

Typically, both simplified and traditional Chinese character trademarks receive equal protection upon registration. The primary difference lies in visual complexity, with simplified characters being more commonly used and recognized in mainland China. Hence, it is recommended to register trademarks in simplified Chinese characters for better recognition.

8. How can priority be claimed when submitting a trademark application?

Applicants can claim priority in China under two circumstances:
If the same trademark is first applied for in a foreign country that has an international treaty with China, and the Chinese application is filed within six months of the foreign application date. The applicant must indicate the priority application date, number, and country in the application and submit a certified copy of the priority application issued by the foreign trademark office.

If the trademark is first displayed at an international exhibition hosted or recognized by the Chinese government, and the application is filed within six months of the exhibition date. The applicant must provide proof and evidence of the exhibition name, date, and the date of displaying the trademarked goods.

Supporting documents for priority claims can be submitted within three months of the Chinese application date.