Registering a Trade Mark in China

China is a crucial market for many businesses, whether as a source of goods or a potential consumer base. Protecting your brand in China is essential, and registering your trade mark is the first step. Due to China's 'first to file' system, securing your trade mark as early as possible is essential to prevent competitors, counterfeiters, or even trade mark squatters from exploiting your brand. This article explores the key considerations when registering a trade mark in China, covering:

• the methods of registration;
• choosing the correct mark; and
• selecting the appropriate goods and services.

Why Is a Chinese International Mark Important?

Unlike Australia's 'first to use' system, China operates under a 'first to file' rule. This means that whoever files a trade mark first gains the rights, regardless of prior use. If someone else registers your brand name, logo, or other mark first, they could block your entry into the market or even stop your goods at customs.

Even if you do not plan to sell directly to Chinese consumers, it is still vital to register your trade mark in China to protect your brand throughout the supply chain. Early registration ensures you retain control over your brand and prevents others from misusing or copying it.

What Mark Should You File?

When registering a trade mark in China, you need to decide whether to protect the Roman character version, the Chinese character version, or both. Registering only the Roman version does not protect the brand from being copied in Chinese characters. Local consumers often adopt their own translations or transliterations, which may not align with your intended brand message.

To ensure your brand maintains its integrity in China, consider working with trade mark lawyers and marketing experts to develop a suitable Chinese mark. You have three main options:

1. Literal Translation: Directly translates the meaning of the original mark into Chinese;
2. Phonetic Translation: Adopts a similar pronunciation to your original mark; or
3. Combined Translation: Uses both phonetic and literal elements to reflect the brand's identity accurately.

Choosing the right mark is critical to protect your brand's reputation and image in the Chinese market.

Covering Goods and Services in China

Like Australia, China uses a classification system that divides goods and services into numerous classes. However, China further splits each class into subclasses. Registering in one subclass does not automatically protect your trade mark in other subclasses, even within the same class.

For example, registering your trade mark in subclass 2507 for shoes does not prevent others from registering the same mark in subclass 2508 for hats, even though both fall under Class 25 (apparel). To ensure comprehensive protection, you must cover all relevant subclasses related to your business, even if they seem ancillary.

Covering multiple subclasses helps prevent competitors, infringers, or trade mark squatters from using similar marks in related areas, which could harm your brand and reputation.

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

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Choosing the Right Registration Method

There are two primary methods for registering your trade mark in China:

1. Direct Filing with the China National Intellectual Property Administration (CNIPA): Direct applications require Chinese-language submissions and must be made through a local trade mark agent. This approach is best if you are solely focused on the Chinese market; and
2. Madrid Protocol: If you are registering in multiple countries, the Madrid Protocol offers a more cost-effective and streamlined option. Applications can be made in English, French, or Spanish and do not require a local representative. However, your international trade mark must correspond with your 'base' trade mark, which may limit flexibility when adapting to the Chinese market.

Key Takeaways

When registering a trade mark in China, act quickly to secure your rights due to the 'first to file' system. Choose an appropriate Chinese mark that resonates with local consumers, and cover all relevant subclasses to protect your brand fully. Weigh the pros and cons of direct filing versus the Madrid Protocol to select the most suitable registration strategy.

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.