China is a first-to-file jurisdiction. Every year foreign brands enter the market without a registration and find that a distributor or a third party has filed their name first. These are the eight points foreign applicants most often overlook.
- A recorded local agent is mandatory. A foreign applicant without a habitual residence or place of business in mainland China must file through a trademark agency recorded with the China National Intellectual Property Administration (CNIPA), and official correspondence is served on that agency.
- Filing date decides, not use. Years of use abroad or a foreign registration do not defeat an earlier Chinese application. The exceptions are well-known marks and marks with prior use and a certain influence in China, and both are expensive to prove.
- File the Chinese-character mark as well. Consumers, distributors and squatters will give a foreign brand a Chinese name. If the company does not choose it, the market will. Transliterations and translations should be filed alongside the Latin-script mark.
- Goods are examined by sub-class. CNIPA divides each of the 45 Nice classes into sub-classes, and goods in different sub-classes of the same class may not be treated as similar. The specification should be designed around the sub-classes that matter; see our Nice classification tables.
- Timelines. A straightforward application currently completes examination in about 4 to 6 months, followed by a 3-month opposition period, so registration takes roughly 9 to 12 months.
- Refusals can be answered. A review may be requested within 15 days of a refusal. Where only some goods are refused, the application can be divided so the accepted goods proceed to registration.
- Three years of non-use exposes the mark to cancellation. Anyone may apply to cancel a registration that has not been used for three consecutive years, so evidence of use should be kept from the start.
- Record the mark with Customs and with platforms. After registration, recordal with the General Administration of Customs and brand registration on the major e-commerce platforms are the most effective enforcement tools available.
Documents required
A copy of the applicant's certificate of incorporation or business licence, the mark, the list of goods and services, and a power of attorney. Notarisation or legalisation is not required in most cases.
J&C Intellectual Property Agency (JCIPO), founded in 2008, is a CNIPA-recorded trademark agency and a member of the China Trademark Association, working in English, Spanish and Chinese for foreign applicants filing and enforcing trademarks in China. Patent filings are handled through an affiliated patent agency.
