China: File Your Trademark In China Before Others Do

Last Updated: 19 January 2017
Article by Michael Liu and Erica Liu

While the United States grants trademark rights generally upon the first party to use a trademark in commerce, China adopts the First-to-File doctrine, which means it grants trademark rights to the party that first applies to register the trademark. Who would register your trademark? They could be your competitors, employees, distributors or contractors!

While the United States grants trademark rights generally upon the first party to use a trademark in commerce, China adopts the First-to-File doctrine, which means it grants trademark rights to the party that first applies to register the trademark. As there is no requirement to produce any evidence of prior use in order to file the trademark in China, quite a few famous foreign marks have been filed by third parties in China. Except the 1Individual Industrial and Commercial Households, the China Trademark Office (CTMO) has ceased allowing Chinese individuals to register trademarks, the problem has not gone away; companies and foreign individuals may still file trademarks in the same manner, and these companies and foreigners could be your competitors, employees, distributors or contractors!

Recently my firm got a call from a US company ("Company") which claimed that both its English trademark and the Chinese translation had been "stolen". After some investigation, we found that it was their own distributor in China ("Distributor") that had filed the trademark -- and just a few weeks they signed their distribution agreement, no less. A few years later when the Company tried to terminate the distribution agreement and engage a new distributor due to the original Distributor's poor sales performance, in order to force the Company to continue the distribution agreement, the Distributor informed Company that it was Distributor that in fact possessed Company's trademark in China, and that Distributor would try to stop others from using this trademark in China. Although the Company well understood that this case could definitely be resolved successfully for them through 2trademark disputation, 3non-use cancellation or infringement litigation, after considering the cost-time litigation calculus, they chose to settle by purchasing the mark. To the Company, not only did they get the mark back finally, but they obtained greater time for expediting their expansion into the Chinese market.

How to Stop a Third Party from "Stealing" Your Mark in China?

The answer to the above is quite simple: register it before they do!

Questions to consider:

  • Is China a (potential) market for your company?
  • Will you manufacture your products in China?
  • Will you be outsourcing in China?
  • Will you bring your products to the Chinese trade shows?

If your answer to any of the above questions is "Yes", please keep reading the rest of this article.

Now the question is how to register a trademark in China?

Step 1: Engage a Chinese Trademark Attorney

4As with patent registration, foreign parties must use the services of approved Chinese agents when submitting the trademark application, however, foreign attorneys may help to prepare the application documents.

Step 2: Develop and Design Your Trademarks

Besides the foreign language marks (English marks) and the logos, foreign companies should develop a Chinese language version of the trademark. If you do not create a Chinese mark, the market will create a Chinese name for your product anyway, and it will take more of your time and money to change it later if you do not like the image this Chinese mark stands for.

Step 3: Choose the Goods/Services and the Classes

China uses the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), which categorizes goods and services into 45 classes - 34 for goods and 11 for services.

There 2 major differences between Chinese trademark system and the US system:

  • There are sub-classes in the Chinese trademark classification system. A trademark owner cannot stop third parties from filing a certain mark in sub-classes under the same class in which the trademark owner has not filed. (Under certain circumstances exceptions do exist.)
  • Usually the goods/services names are chosen from the "Classification Table of Similar Goods and Services". If the applicant submits a descriptive statement instead, CTMO may require the applicant to correct the unclear contents and return the application to them within 30 days. If correction is not carried out within the time limit, the application will be deemed abandoned. However, a descriptive statement is allowed under the US trademark law.

Step 4: Application for Priority Registration

If, within 6 months of the date on which an applicant for trademark registration first applies for registration of the trademark in the USA, the applicant applies for registration of the same trademark for the same goods in China, this person shall be entitled to a right of priority. The applicant shall submit a written declaration when submitting his application for trademark registration and, within 3 months, submit copies of trademark application documents certified by USPTO.

Presently, the time required for registration (from initial filing till approval) is approximately 1.5 years in China provided that there is no rejection or opposition – this is quite an improvement over the minimum 3.5 years it took before.

Finally, you should also consider registering the equivalent Internet domains and your trademarks throughout the other jurisdictions of "Greater China," including Hong Kong, Taiwan, Macao both for purposes of potential expansion and to block others from registering marks to use on products consumers may confuse with yours.


1. Article 2 of Administrative Measures for the Registration of Individual Industrial and Commercial Households provides that citizens with operation capacity may legally conduct business operations after being registered at the administrative departments of industry and commerce and obtaining the business licenses for individual industrial and commercial households.

2. Article 41 of PRC Trademark Law (2nd Revision) provides that Registered trademarks that violate the provisions of Article 10, 11 or 12 hereof or for which registration was obtained by deceptive or other improper means shall be cancelled by the Trademark Office. Other work units or individuals may request the Trademark Review and Adjudication Board to rule to cancel such trademarks.

If a registered trademark violates Article 13, 15, 16 or 31 hereof, the owner of the trademark or a materially interested party may, within five years of the date of registration of the trademark, request that the Trademark Review and Adjudication Board cancel the registered trademark. However, the owner of a well-known trademark shall not be subject to such five year time limit if the trademark was registered in bad faith.

Article 13: A trademark that constitutes a reproduction, an imitation, or a translation, liable to create confusion, of another's well-known trademark not registered in China and that is the subject of an application for registration for identical or similar goods shall be refused registration, and its use shall be prohibited.

Article 15: If an agent or representative registers a trademark of his principal in his own name without having been authorized to do so, and his principal opposes such registration, registration of the trademark shall be refused and its use prohibited.

Article 31: An application for the registration of a trademark may not prejudice the existing right of priority of any third party nor may improper means be used to pre-emptively register a third party's trademark that is already in use and that has a certain degree of influence.

3. Article 44 of PRC Trademark Law (2nd Revision) provides that the Trademark Office shall order rectification within a specified period or cancel the registered trademark in case of any of the following acts in respect of the use of a registered trademark: (4) suspension of use for a continuous period of three years.

4. Article 10 of PRC Trademark Law (2nd Revision) provides that any foreigner or foreign enterprise intending to apply for the registration of a trademark or for any other matters concerning a trademark in China shall entrust any of such organizations as designated by the State to act as his or its agent.

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”

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
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.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


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.