Category: FAQ

Is it really necessary to do a comprehensive trademark search before filing?

Before filing your trademark registration applications in China, trademark attorneys will always ask you: do you wish to do a comprehensive trademark search before filing?

Advantages to do it

The advantages of doing a pre-filing trademark search are obvious:

  • You can confirm whether there are any conflicting trademarks before you file your application.
  • You don’t have to wait for a year or so to know that there is a conflicting trademark which can block your trademark registration, which you should have been known before filing (that’s one year earlier) if you had done the pre-filing search. It should reduce the uncertainty of your trademark’s status in China greatly.
  • If you find out that there are conflicting trademarks, you can take preemptive actions in advance, e.g. cancelling or invalidating or opposing the conflicting trademark, rather than waiting for a year to do that.
  • If you just cannot lift the conflicting trademark, you may consider your trademark strategy in China and amend your trademark for China. This is better than spending a lot of money to promote your brand in China, and found out later that you just cannot legally register and use it in China.

Disadvantages

Despite of the advantages of the pre-filing trademark search mentioned above, there are certain disadvantages to do the comprehensive pre-filing trademark:

  • It will increase your costs. Usually a comprehensive trademark search for one trademark in one Class will cost no less than USD 500. This is more than the cost of simply filing the trademark to China Trademark Office.
  • It will delay the process. As the comprehensive trademark search takes a lot of time, it will absolutely delay the process of trademark filing. In average, the filing process could be delayed for about 1 week if you choose to do the comprehensive pre-filing trademark search.
  • It may increase rather than reduce uncertainty. As the judgement of similarity between trademarks are quite subjective, it is not always a black-and-white issue to determine whether an existing trademark is conflicting with your proposed trademark. As such, sometimes the result of a comprehensive pre-filing search is more confusing, and no trademark attorney can guarantee what China Trademark Office will determine, which may cause greater uncertainty, rather than reducing the uncertainty.
  • It may put you in a more dangerous position. Taking an early action against the possible conflicting trademark could give an early warning to the owner of the conflicting trademark, and therefore may drag you into a fight when you just enter the China market and are not ready for the fight.

Our recommendation

Based on the above, it seems to us that a comprehensive pre-filing trademark search has its advantages and disadvantages. Whether you should do it really depends on your specific situation.

If you have already used your brand in China and built certain reputation on it, and changing your brand/logo could cause significant impact on your business, it seems that it is not necessary for you to do the comprehensive trademark search before filing.

This is because amending your trademark will not be an option for you and you can always take actions against the conflicting trademarks after your trademark applications are rejected by China Trademark Office citing certain conflicting trademarks. In this case, to keep a better position in the scenario of conflicting, it is always better to file your trademark application earlier rather than spend more time on trademark search which may not give you a lot of benefits.

However, if your brand is new to the China market and you can amend your brand or logo to suit the China market, and you just want to make sure that your trademark is registrable from the day one you promote your business in China, then yes, we strongly recommend you to do a comprehensive pre-filing trademark search, as long as you can afford it.

Having said the above, no matter what your specific situation is, you should always do a simple pre-filing trademark search to confirm whether there is any identical trademark existing. This should not take too much time and most trademark attorneys can do it without extra charge.

What is the cost to prosecute someone using your trademark?

The costs to prosecute someone using your trademark vary depending on the specific situation of each case.

Factors which can affect the costs include: whether you need to hire an investigator to collect the evidence on the infringing goods and the profits of the infringing party, whether you need to engage the notary public to notarise the evidence collected, where the infringing party is located in China, how much you intend to claim for compensation, etc, etc, all these will affect the costs of prosecution.

In a normal situation, the total costs for the first instance court trial could be between RMB 200,000 and RMB 500,000.

What options do I have if someone in China uses my trademark without my consent?

In general, you have three ways to stop the unauthorised use of your trademark in China:

  1. To send a cease and desist letter to the unauthorised user and the other concerned parties.
  2. To seek administrative remedies like requesting the competent administrative authority to investigate and stop the unauthorised use.
  3. To seek judicial remedies like applying for injunction to stop the unauthorised use.

“Standard terms” for trademark registration, what does it mean?

As you can see from the Nice Classification, there are a lot of terms under each Class.

China Trademark Office requires that when filing a trademark application, the applicant must use the standard terms used in the Nice Classification or the China Classification. Otherwise, China Trademark Office will require the applicant to make revision to its satisfaction.

For example, “health food” is not a standard term. If you wish to register your trademark on health food, you may have to choose three standard terms to cover it, “health food supplements made principally of vitamins”, “health food supplements made principally of minerals”, and “health food supplements for persons with special dietary requirements”.

In order to avoid extra costs and time spent in the trademark application process, we strongly recommend our clients to use “standard terms” for trademark registration in China.

Having said that, China Trademark Office published a list of acceptable terms in 2017 which were regarded as non-standard terms and therefore were not acceptable before. Terms in such list are also acceptable to China Trademark Office.

What does “Class” mean?

For trademark registration purpose, the goods and services are categorized into different groups and such groups are called Classes. There are 45 Classes altogether.

In China, the classification of goods and services is set out in a List of Similar Goods and Services (“China Classification“), which is pretty much based on the Nice Classification (“International Class“) with certain additional items which are only available in China. For most foreign clients, it should be sufficient to register their trademarks in China based on the International Class.

Nice Classification

The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks. The 2017 version of the eleventh edition of the NCL is the current version which came into force on January 1, 2017.

For the details of the latest Nice Classification, please visit the following website:

http://web2.wipo.int/classifications/nice/nicepub/en/fr/edition-20160101/taxonomy/?mode=flat

The headings of all 45 Classes are as follows:

Class List of terms
1 Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry
2 Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins; Metals in foil and powder form for use in painting, decorating, printing and art
3 Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices
4 Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting
5 Pharmaceuticals, medical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides
6 Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Ores
7 Machines and machine tools; Motors and engines [except for land vehicles]; Machine coupling and transmission components [except for land vehicles]; Agricultural implements other than hand-operated; Incubators for eggs; Automatic vending machines
8 Hand tools and implements [hand-operated]; Cutlery; Side arms; Razors
9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking [supervision], life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus
10 Surgical, medical, dental and veterinary apparatus and instruments; Artificial limbs, eyes and teeth; Orthopedic articles; Suture materials
11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes
12 Vehicles; Apparatus for locomotion by land, air or water
13 Firearms; Ammunition and projectiles; Explosives; Fireworks
14 Precious metals and their alloys; Jewellery, precious stones; Horological and chronometric instruments
15 Musical instruments
16 Paper and cardboard; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists’ materials; Paintbrushes; Typewriters and office requisites [except furniture]; Instructional and teaching material [except apparatus]; Plastic materials for packaging; Printers’ type; Printing blocks
17 Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal
18 Leather and imitations of leather; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery
19 Building materials [non-metallic]; Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal
20 Furniture, mirrors, picture frames; Unworked or semi-worked bone, horn, ivory, whalebone or mother-of-pearl; Shells; Meerschaum; Yellow amber
21 Household or kitchen utensils and containers; Combs and sponges; Brushes [except paintbrushes]; Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass [except glass used in building]; Glassware, porcelain and earthenware
22 Ropes and string; Padding and stuffing materials [except of paper, cardboard, rubber or plastics]; Raw fibrous textile materials; Tents, awnings and tarpaulins; Nets; Sails; Sacks
23 Yarns and threads, for textile use
24 Textiles and substitutes for textiles; Bed covers; Table covers
25 Clothing, footwear, headgear
26 Lace and embroidery, ribbons and braid; Buttons, hooks and eyes, pins and needles; Artificial flowers
27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings [non-textile]
28 Games and playthings; Gymnastic and sporting articles; Decorations for Christmas trees
29 Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats
30 Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastries and confectionery; Edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces [condiments]; Spices; Ice
31 Agricultural, horticultural and forestry products; Live animals; Fresh fruits and vegetables; Natural plants and flowers; Foodstuffs for animals; Malt; Raw and unprocessed grains and seeds
32 Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages
33 Alcoholic beverages [except beers]
34 Tobacco; Smokers’ articles; Matches
35 Advertising; Business management; Business administration; Office functions
36 Insurance; Financial affairs; Monetary affairs; Real estate affairs
37 Building construction; Repair; Installation services
38 Telecommunications
39 Transport; Packaging and storage of goods; Travel arrangement
40 Treatment of materials
41 Education; Providing of training; Entertainment; Sporting and cultural activities
42 Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software
43 Services for providing food and drink; Temporary accommodation
44 Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services
45 Legal services; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals

China Trademark Office

China Trademark Office is the only government authority in China responsible for all trademark registration matters in China.

It is under the supervision of the State Administration for Industry and Commerce of China (“SAIC“).

China Trademark Office can be referred to as “CTO” or “CTMO”.

The official website of China Trademark Office is: www.ctmo.gov.cn or sbj.saic.gov.cn All other websites which are not ended with “.gov.cn” are not official government websites in China.

Separate from China Trademark Office, there is another government authority which is responsible for reviewing the decisions made by China Trademark Office. It is called the Trademark Review and Adjudication Board (“TRAB“). TRAB is also under the supervision of the SAIC. The trademark re-examination and trademark invalidation cases will be reviewed by the TRAB.

The official website of TRAB is: www.saic.gov.cn/spw/

What is the “first to file” principle?

China does not require “use” or “intention to use” for filing a trademark registration application. This means anyone can file any trademark for registration in China as long as it has not been filed by someone else in China before and does not breach any Chinese laws.

If two or more applicants file the same trademark application, the one who files first can be registered. The other applications will be rejected.

If two or more applicants file the same trademark application on the same day, the one who used the proposed trademark first can be registered.

If none of them had used the proposed trademark, they can negotiate and reach an agreement which will be recoganised by China Trademark Office.

If no agreement can be reached, China Trademark Office will determine who can have the trademark by drawing.

Who are these trademark “squatters”?

The possible trademark “squatters” include the agent and distributor of your products, your business partner or competitor, your employee, your trademark agent, your customer or other entity or individual which gets to know your trademark through business communications.

In addition to that, there are local Chinese who every day scan the Internet looking for foreign brands to register as trademarks in China. Some just go to exhibitions and collect brochures and business cards as a source of idea.

They do this because it is very profitable. It costs a local Chinese very little to register a trademark but a foreign company will often pay handsomely to recover it. It is fair to say that recovery of a trademark, if this is possible, will cost at least 10 to 50 times the cost of registering it in the first place.

What is trademark squatting? Why is it more serious in China than in other countries?

Trademark squatting means this: a third party registers your trademark before you do it in bad faith.

Trademark squatting is very serious in China mainly for two reasons: (a) China Trademark Law adopts the first-to-file principle in trademark registration, and (b) the Chinese law does not require “use” as a condition for the trademark registration.

Based on the above two principles, the applicant does not need to prove they have used or intend to use the applied trademark in order to register the proposed trademark in China. As long as there is no prior conflicting trademark and the applied trademark is registrable according to the law, China trademark registration authority will approve the registration. This will cause serious damage to the actual trademark owner and it is important to fight against such action as early as possible.

Which geographical areas are covered by a China trademark?

The geographical areas covered by a China trademark are limited to the Mainland of China only.

If you wish to get protections for your trademark in Hong Kong SAR, Macao SAR or Taiwan District, you need to register the trademark separately and respectively in each of these districts.