Every company, no matter how big or small, has some intellectual property (IP). The most common type of IP right is a trademark. A trademark is essential to all kinds of companies, whether you are a producer, distributor or service provider, as it allows clients to distinguish you from your competitors and builds the image and reputation of your brand. 

 

International laws, including Chinese laws, grant legal protection to trademarks providing that they comply with a few basic requirements: the mark must be distinctive, must not have previously been used by others in the same market, and must not describe the product, e.g. you cannot register ‘Apple’ as a trademark for apples.   

 

Trademarks are territorial in nature and therefore must be registered in every country. A trademark registered in Spain, for example, is not automatically valid in China. If you want to obtain protection in China you must register with the China Trademark Office (CTMO)  either by directly filing a domestic application or by filing an international extension through the Madrid System.

 

More information on registering and enforcing your trademark in China, including information on bad-faith registrations and the file-to-file system, can be found on our website  http://www.china-iprhelpdesk.eu in the China IPR SME Helpdesk publication, Guide to Trademark Protection in China. 

 

 

Before you apply to register your trademark in China you should check that it is available and has not been previously registered by another company (known as a ‘bad-faith’ registration), or is too similar to any other registered trademark. This step will prevent you from spending resources on an application which will be rejected and could delay your business operations in China.

 

Trademark agents can conduct a trademark search on your behalf but you can conduct an initial search by yourself on the CTMO online database  which records all trademarks applied for and registered in China.  The database is available in English and is free to use. Please note that there may be a delay of up to several weeks between some applications being filed and appearing on the CTMO database.  

 

 

The CTMO online database can be used to search for all trademarks registered or currently in the application process in China. The database is available in both Chinese   and English. 

 

The CTMO recommends using Internet Explorer 6.0 to conduct the search as other browsers do not display the information correctly.

 

Before you begin please accept the disclaimer in order to continue with the search. As the disclaimer states, the information available on the database may not be 100% up to date and therefore can only be considered a preliminary search. 

 

To begin you need to choose one database :  

• For a basic search - SGTMI

• For an advanced search for identical or similar trademarks - SISTM

• For trademark application status - STMAS

 

 

The SGTMI database allows you to make a basic trademark search to show whether any identical or almost identical trademark has already been registered in China. This search is particularly useful to check for ‘bad-faith’ registrations in China.

 

The SGTMI is a simple search engine which allows browsing by entering information into one or more fields. No field is compulsory but the more information you provide the better the results: 

• International Classification no. 

• Chinese trademark registration or application number – this search term can only be used if you know the registration number of a trademark which has already been registered in China.

• Trademark name - includes the possibility to search for trademarks which are identical to the search term, which begin with certain letters, or which include the searched term. The selection of searching alternatives may be particularly useful for different types of marks, for example:

• Use the ‘begins with’ search field for trademarks where the first element is the most distinguishing and the other elements are generic, e.g. Apple Inc., Dell Inc., Google Inc.

• You can use the search for ‘identical’ marks if the name is short.

• The ‘includes’ field may be useful in order to find all the marks which contain some popular prefix or suffix e.g. -ex, -extra, - natural.

• Name of registrant - name of the right holder either in Chinese or in English if known.

 

By clicking on the result from your search you can see the full trademark information: The trademark information contains the following data: 

 

1. Registration no./application no. – every mark in each class of goods in China has a separate number. For example, the trademark ‘European Chamber’ is registered as two separate trademarks, 8758425 in class 41 and 8758426 in class 35.

This differs from most European countries where a trademark is registered only once and the same registration can cover a number of classes. Numbers starting with the letter ‘G’, indicate that the trademark was first registered in another country and has been extended to China.

 

2. International classification number – every trademark must be registered in one of the 45 classes of goods and services.

 

3. Application date – this refers to the date on which the CTMO received the trademark application.

 

4. Name and address of the registrant – in English and/or Chinese.

 

5. Representation of the mark – the image may sometimes appear upside down due to a technical problem.

 

6. List of goods and services – lists all the goods and services covered by the trademark. Information in this field is only available in Chinese.

 

7. Similar group – includes the International Classification number and the subclass number, e.g. 4101 indicates international class 41 and subclass 01.

 

8. Trademark Gazette Publication – the Trademark Gazette is an official publication of CTMO including all trademark related matters such as preliminary approval, approval, renewal, modification and so on. In addition to the printed Gazette it is available online in Chinese only. The date of Preliminary Publication and Registration Publication are important if you find that your trademark has been registered in bad-faith by another company.

 

a. Preliminary publication – following preliminary publication an opposition can be filed with the CTMO within three months. This may mean you can prevent a potential bad faith registration.

b. Publication of registration – this date indicates that the trademark has been successfully registered by the CTMO.

 

9. Effective Period of Exclusive Right – trademarks can be perpetual but must be renewed every ten years in China.

10. Other information including:
 

a. Date of subsequent designation – relevant for international registrations.

b. International registration date – relevant for international registrations.

c. Priority date – the date of the first filing abroad.

d. Agent name – name of the legal representative if applicable.

 

If the trademark remains under examination, i.e. it is still in the application process and has not yet been published in the Trademark Gazette, most fields will be empty and will contain the following information on the examination process:

 

The ‘Trademark Process’ field indicates the current stage of the registration process. This field may include no information or the following in Chinese only. Click on the field to link to the next page which contains more detailed information in Chinese:

 

驳回 = refusal 

变更 = modification

争议 = dispute

领土延伸 = territory extension

异议 = opposition  

续展 = renewal 

期满未续展 = no renewal after expiration

驳回复审 = refusal and review

转让 = transfer

 

 

If you want to search for trademarks which may be considered similar to your trademark, you can use the SISTM database. This is recommended because trademarks which are too similar to existing trademarks will not be granted by the CTMO.

 

The process is similar to the basic search, but you must input the International Class No. and a minimum of one other search term.

 

The database can search marks in Chinese characters, Chinese pinyin, English letters, numbers, and acronyms, and by graphic elements.

 

 

If your trademark is not in the database:

 

This probably means that your trademark is available and therefore we advise you to begin the process of registration with the CTMO as soon as possible. If you do not have residency or a place of business in China you must apply through a local trademark agent. A list of qualified trademark agents can be found on the CTMO website http://www.saic.gov.cn/sbjEnglish/sbdl_1/zmd. If you are planning to register the trademark in Europe you can extend the registration to China through the Madrid Protocol. For more detailed information on trademark registration please see the China IPR SME Helpdesk publication ‘Guide to Trademark Protection in China’.

 

Please note that it is possible that a trademark application has been filed but the information is not yet available online as per the disclaimer mentioned above.

 

If your trademark is in the database:
 

This may mean that your trademark has been registered in ‘bad-faith’ and is now effectively owned in China by someone else. At this point your options include:
 

• During the three month period between the bad-faith registration of your trademark being published in the Trademark Gazette and the trademark being granted, you can file an opposition with CTMO.

• If the trademark has already been registered, you may be able to have the registration invalidated by filing a case with the Trademark Review and Adjudication Board (TRAB). The chance of success will depend on the specifics of the case.

• It may be possible to buy the trademark through an online ‘supermarket’ or by negotiating directly with the trademark owner, or through an intermediary such as a lawyer or trademark agent.

 

Take-away message:
 

 

Early registration of trademarks in China should be considered key to protecting your business even if China is not your primary market. Consulting the CTMO database is a relatively simple way of establishing if your trademark is already owned by someone else or assessing if a trademark that you wish to register is too similar to one that already exists; taking such actions can save your business time and resources. 

By Philippe Healey