China Due Diligence - Step By Step Guide To Trademark Registration In PRC
Updated: Jul 17, 2020
We have written about China's first to file trademark system and the importance of protecting your IP in China elsewhere.
Just to make things simple we decided to provide a step by step guide so you to know what to expect. So without further ado.......
Decide on your Chinese name.
Some brands prefer to simply keep their English name for China there are positives and negatives in this regard. Broadly unless you can afford to market yourself to get the Chinese to recognise your English name / logo then probably best to have a Chinese name.
Now you have two choices: phonetic translation - that is replicating the sounds of your name or literal translation - in which the words themselves are translated.
So it really depends on the name to see what is practical - my surname is Goldstone so if I was a brand it would be easy to translate into Jin Shi literally Gold Stone or Gold Rock. However if my company name contained an abstract words or place names lets say Basingstoke then phonetic translation is more practical. (Sometimes you can use a combination "Basingstoke Technology Co" would likely use phonetic translation for Basingstoke and then add the appropriate existing Chinese symbols for technology company)
Be sure to check your options with as many of your Chinese colleagues as possible - try out a few options and see what resonates - be careful to check that your new phonetically translated Chinese name doesn't literally mean something terrible.
Famously Coca Cola had a problem with this when a phonetic translation literally gave the characters for, "bite the wax tadpole," apparently this wasn't the resonance they wanted so now their new name Ke kou ke le means something along the lines of, "fuzzy mouth feel."
If your struggling with stage one Wang Lin from our team will be happy to help you create the right Chinese name.
2. Find a registered Chinese Trademark Agency
As a foreign company you cannot register yourself so you must use an agent approved by the Chinese government. This is normally a Chinese lawyer also registered with the All China Lawyers Association. Many are of course available and at every conceivable price point. This of course includes some scammers in this area who will take your money and provide you with false documents - this definitely does happen - did we mention due diligence anywhere before ? Obviously if it seems too cheap then it probably is.
Also worth a mention is that a foreign law firm (and this includes Hong Kong) cannot be a registered trademark agency. We are fortunate to retain Michael Qu on our team who is a fully registered as a Chinese Lawyer with the ability to file for trademarks.
3. Decide what you want to register and in what class.
This bit is a little technical and your trademark agent should be advising you around this. Do you want to register your Chinese and English names separately? What about the logo?
If you were to combine your Chinese and English names into one logo then you could get away with a single filling however what if you want to use your logo separately? Essentially the more you file separately the more flexibility you have however each part will require separate registrations so will add to the cost. There is no blanket advice on this you need to think through what is right for your organisation.
China uses a slightly adapted version of the International (NICE) Classification of Goods and Services
Essentially you just need to work out how your business fits into this classification. List here
No problem if you want to file in multiple classes however as these are separate fillings and therefore the cost will rise.
4. Conduct Searches
The China Trademark Office (CTMO) run by the State Administration for Industry and Commerce (SAIC) provides an online tool for this however there is no version in English. This is the job of your trademark agency they need to conduct suitable searches on what you want to register, see if might impinge on anyone else's IP and advise you of the chances of success. Clearly a rethink may be required at this stage if any issues arise.
5. Gather the Appropriate Documents
Your trademark agent will request the following:
Signed power of attorney allowing them to act on your behalf
Company business licence or incorporation certificate - please note that the name and address on this document must be identical to that on your application or it will be rejected.
Chinese translation of name and address
Now it's the job of your agent to complete the official application document to send along with the above to SAIC.
6. File The Application
Your agent will now file the application with CTMO and will provide a receipt.
It is worth noting that at this stage you are now protected in the sense that anyone registering your name in future will be rejected as you are the first to file.
The trademark office will consider your application from every conceivable angle to check the legality availability and distinctiveness of your application. Expect to wait 6-9 months.
8. Wait a little longer
Once the above test has been met the government will publish in the official trademark gazette allowing any party to object. This is a mandatory 3 month period. As long as there is no objection you can then expect the official certificates to be released to you via your agent.
9. Things not to forget
Your trademark is valid for 10 years so put a note in the diary to renew 9 years hence.
Your trademark is invalidated if you don't use it for 3 years.
If your agent is not working through the stages above then something is amiss.
Congratulations you have successfully protected your trademark in China !