A trademark is a legally recognized sign, design, or expression that identifies and distinguishes the source of goods or services of one entity from those of others.
Only a trademark registered in China can be enforced in China. If you plan to enter the China market, you should protect your brand by registering your trademark in China as early as possible, ideally before you enter the market.
There are two methods for applying to register your trademark in China.
Submit your application directly to the China National Intellectual Property Administration (CNIPA). Since trademark applications can only be submitted by a person or entity resident in China, you will generally need a Chinese law firm or service provider to do this.
You can engage a service provider in China directly yourself, or you can work through your law firm or IP service provider in Canada. If your Canadian service provider does not have a presence in China, they will also need to engage a service provider in China to assist them. The TCS maintains a list of IP service providers in China.
The second method is through what is known as the “Madrid System”. This allows you to register your trademark in multiple countries through a single, streamlined application process. This process is generally initiated in the country where you have already registered or applied for a national or regional trademark.
The time it takes to register your trademark in China varies depending on the complexity of the application, or if anybody opposes your application. Generally the process is relatively fast in China, taking around six to nine months from application to registration if there are no oppositions to the registration or other issues. Such delays can extend the process by another 12-18 months. When filing in China using the Madrid System, CNIPA has 18 months to decide whether to accept the trademark.
China follows what is known as the Nice Classification system, which is an international system for classifying goods and services for trademark registration.
China also adds a layer of “subclasses”. This system divides the 45 main classes into around 1500 subclasses. Trademark protection in China is largely determined by these subclasses, so you should carefully evaluate in which of them to register your trademark to avoid leaving gaps in your protection.
In China, registering a Chinese language trademark is equally as important as registering your English or French language marks. Chinese consumers largely refer to brands by their Chinese names, since they are generally easier for them to remember and pronounce. If you do not create your own Chinese-language brand name, Chinese consumers will organically create one for you. This may or may not reflect the brand image you have worked so hard to develop. Not creating and registering your own Chinese-language trademark also introduces the risk that a third party will register the Chinese-language name that consumers adopt for your brand. This would stop you from registering it yourself and allows the third-party to profit from your brand’s reputation.
Some of the common challenges faced by Canadian companies in trademark registration and protection in China are:
