China: Effective Trade Mark Protection In China

Last Updated: 6 August 2014
Article by Leighton Cassidy and Claire Keepax

With the rise in economic prosperity in China, many brand owners are keen to expand into this market.  Rights in a trade mark in China are acquired solely through registration so it is essential for brand owners to be the "first to file" their mark in China. Prior use by the legitimate brand owner, by itself, will not provide a basis for taking action against third party use or registration of a mark. 

Chivas Brothers, the makers of Chivas Regal whisky came up against this problem when they were unable to prove that the CHIVAS REGAL mark was sufficiently well-known in China to stop the use and registration of the mark by a third party for goods in a different class from that registered by the brand owner.

Sub-classification in China

Filing for its usual list of goods and services in China may not provide a trade mark owner with adequate protection due to the sub-classification system in operation in China.  Whilst China broadly follows the Nice Classification system, brand owners should be aware that under local practice goods and services are further broken down into sub categories within each class. Unwary trade mark owners may be caught out by the Chinese sub-classification system as examination of the similarity between goods and services does not necessarily reflect practice elsewhere in the world.

An item that falls into one sub-class will not be deemed similar to an item which is listed in a different sub-class. This is so even where both items fall within the same Nice class and where similarities may be routinely recognised in other jurisdictions.  The China Trade Mark Office ("CTMO") will automatically deem items within the same sub-class similar rather than considering whether this is so commercially and practically.

If brand owners are not quick off the mark "brand pirates" may take advantage of the "first to file" system in China by registering the brand owner's mark and blocking a later legitimate application for registration of the mark. Brand owners then may be faced with long, expensive and uncertain legal proceedings to have the earlier registration cancelled or alternatively the unpalatable option of paying off the "brand pirate" in return for an assignment of its registration.

A further situation may arise where a trade mark owner is unable to oppose registration of its brand by a third party within a sub-class that the legitimate owner may have overlooked registering.

Supply chain issues for exports

Brand owners who manufacture in China but who export overseas rather than marketing locally may also be caught out if a third party registers the brand with Chinese customs. Then the brand owner's legitimate goods bearing a mark which has been pirated may be intercepted by the authorities. Getting the goods released can be a long and difficult process, giving the "brand pirate" trade mark owner the opportunity to effectively hold the mark to ransom, knowing a brand owner will meet its financial demands in order to avoid severe commercial implications if it cannot secure early release of its goods.

Translations or Transliterations

A trade mark owner should also consider registering a local language version of its mark.  A brand owner may choose to adopt the direct Chinese translation of the words that comprise the mark or it could opt for an interpretation of the mark in Chinese which sounds similar to the way the mark is pronounced in English. It may be possible to choose characters which promote the brand or otherwise have positive connotations. There can be many different Chinese characters which have the same pronunciation which means an English word may have many different Chinese transliterations so seeking local advice is recommended when selecting the appropriate version.

Hermès, another seemingly well-known brand, was unable to stop the registration of a Chinese version of its name which was pronounced in the same way as the Chinese version of the mark that it has been using and which shared very similar characters.  This was because it was not the first to file a Chinese version and it could not show that the brand had become well-known in China prior to the rogue registration and despite having a pre-existing English-language registration in China.

Prevention is better than cure

The key to successful brand protection in China is securing early registration and filling any potential gaps before they are exploited by unscrupulous third parties. It is also important to consider that Taiwan, Hong Kong and Macau are not covered by a Chinese trade mark registration.  They are separate registries and will require separate registration.

Any businesses thinking of expanding into China, either in terms of sales in this market or by locating manufacturing operations there, should take immediate steps to apply for registration of the trade mark in all relevant sub-classes to pre-empt any bad faith registrations.

Owners of existing registrations should consider whether there are any gaps in their protection and all brand owners should undertake regular audits to take into account potential new product lines or services.

One strategy is to obtain registration of at least one item listed in each sub-class under a particular class of interest. If budgetary constraints make this difficult, a trade mark applicant should carefully consider the type of goods and services it offers, is likely to offer in the future or which it would wish to block and tailor its specification accordingly.  Trade mark owners should bear in mind that registrations become vulnerable to challenge for non-use after three years but the risk of challenge may be outweighed by the benefit of a broad registration deterring would-be trade mark hi-jackers.

Also if a brand owner is trying to avoid rejection on the basis of an earlier mark that has been identified through searches, for example, it may avoid filing in certain sub-classes so that an automatic objection is not raised by the CTMO.

With the implementation of new trade mark legislation in May 2014, China has taken steps to bring its trade mark protection in line with practice elsewhere. However, much will depend on interpretation by the courts so this alone will not prevent illegitimate exploitation of brands.  Therefore, proactive steps should be taken by trade mark owners to protect their brands in China.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.