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.

Similar Articles
Relevancy Powered by MondaqAI
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”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions