Chinese Trademark -Necessity and Precautions-

From time to time, we see articles about Japanese place names or trademarks of Japanese companies being registered in China by third parties without permission, causing problems.
We recommend that you register your trademark in China if you intend to potentially use your trademark to conduct business in China or sell products in China. Trademark registration in China, as in Japan, is done on a first-come, first-served basis, so it is important to file your application as soon as possible.
I see.
There is a possibility that counterfeit products will be sold in China using Japanese trademarks, right?
I’m not sure if I will do business yet, but what should I do if I decide to file an application in China?
If you wish to apply, you will need to contact a reliable Chinese agency.
Even if you are not doing business in China, there are a great many cases of Japanese products being sold in China these days due to the development of e-commerce. And since Japanese products with guaranteed quality are popular in China, there have been a series of cases of trademark preemptions targeting such products.We need to think carefully and take action early for risk management.

In fiscal year 2021, a huge number of trademark applications were filed in China, approximately 9.45 million, or 26,000 per day.

Trademarks are registered in China under the “first-to-file” system, whereby the first application filed is registered.
In addition, the reality is that there are many trademark applications filed by fraudulent means or in bad faith.

Although the Chinese government is strengthening its crackdown on bad-faith trademarks by amending the Trademark Law and other measures, it is most important to file applications before they are preempted.

This article introduces the necessity of registering a trademark in China and some of the important points to keep in mind when filing an application.

Necessity of Chinese Trademark Registration

Registering a trademark in China involves a number of costs, including fees to pay the Chinese agent, the Office fees, and the *Japanese agent’s fees. (*If you are filing a Chinese application through a Japanese patent firm)
When is it necessary to register a Chinese trademark?

There are three main points to consider

1. Secure your own use

Trademark rights are country-specific rights. Therefore, even if you have obtained trademark rights in Japan, they are not effective in China.

Similar to the need to register trademarks domestically, it is important to register your brand as a trademark and ensure its safe use when producing and selling goods or providing services in China.

If you use an unregistered trademark, there is a risk that your trademark will be registered as a loophole and you will not be able to use your own trademark, or that you will infringe on the rights of a third party.

It is necessary to obtain trademark rights to secure your own use of the trademark, as this may lead to trademark buy-back or even compensation issues.

2. Countermeasures against malicious trademark registration

Although the Chinese government is stepping up its crackdown on bad-faith trademarking, there are still a large number of opening and loophole applications filed each year.

Even if the application is a malicious application, it will be registered without being rejected in the examination, so it is necessary to cancel the registration by filing an opposition or using the cancellation trial system.

Since opposition and cancellation trials are costly and time-consuming, it is necessary to obtain the rights to the trademarks that you intend to use in advance.

3. Effectiveness against counterfeit products

In China, customs authorities have taken measures under the law to prohibit the import or export of goods that infringe intellectual property rights.

These intellectual property rights include trademarks, copyrights, copyright-related rights, and patent rights ( including utility models, and designs) protected by Chinese laws and administrative regulations.

In other words, once a trademark right has been acquired, protection can be obtained either ex officio or upon application.
If there is an import or export shipment suspected of infringing a trademark registered at customs, customs will seize, search, or dispose of the shipment ex officio or upon application by the right holder.

Counterfeit products can be stopped from being distributed in China or exported from China to other countries at the border.

Points to keep in mind when registering a trademark in China

There are a few things to keep in mind when registering a trademark in China.
Below are some of the important points to keep in mind when registering a trademark in China.

Selection of trademarks to be applied for (simplified characters, European characters, and graphics)

In China, simplified Chinese characters are mainly used, so the same trademark registered in Japan may not be used.
Japanese kanji and simplified Chinese characters have different glyphs, so Japanese kanji are difficult to recognize, while katakana and hiragana are treated as graphics. Therefore, it is necessary to prepare a trademark for China

In addition, each Chinese character has its own meaning, so what it means in Chinese should also be fully considered.

Description of designated goods and services

In China, registration of goods and services other than those listed in the similar goods and services classification table promulgated by the Chinese Trademark Office is generally not granted. Therefore, the same description of designated goods as in Japan may not be allowed. Thus, it is necessary to carefully select the designated goods and designated services when filing an application.

In addition, comprehensive descriptions that are not included in the classification table are not permitted, so clear descriptions for each product are required.

If there is any deficiency in the description of the designated goods or services, an amendment order will be issued and must be complied with, but care must be taken because there is only one chance to respond to the amendment order.

Selecting an agent

Choosing an agent and filing an application in China must be processed through a Chinese trademark agent.
As you can see from the huge number of applications filed, a very large number of trademark firms have been established, and the quality of agents is not maintained to a certain degree.

In order to avoid problems with local representatives, we recommend that you delegate your rights to a Chinese agent through a reputable Japanese patent firm.

We support many Chinese trademark applications each year through our experienced Chinese attorneys.
If you are considering filing a Chinese application, please contact us.

Rights do not extend to Hong Kong and Macau

Trademark rights in China are based on Chinese trademark law.
It should be noted that Chinese trademark law protects only mainland China and does not extend to Hong Kong and Macau, which were formerly under foreign rule.

In addition, the right does not extend to Taiwan, so individual applications must be filed separately.

For example, in order to crack down on counterfeit goods in Hong Kong, you must obtain trademark rights in Hong Kong. Also, if you use your trademark only in Hong Kong, it does not constitute use of the trademark in mainland China, which may result in cancellation of the trademark.

Chinese Trademark System

The following is a brief explanation of the Chinese trademark system.
First, the process from application to registration. Unlike in Japan, there is an opposition period before registration is granted.

In brief, the process is as follows.
Application ⇒ Formal examination ⇒ Amendment order ⇒ Response ⇒ Substantive examination ⇒ Decision of refusal ⇒ Appeal ⇒ Public notice ⇒ Opposition ⇒ Opposition decision ⇒ Registration

It should be noted that in China, the time frame for responding to an amendment order or a notice of refusal is very short.

-Response period for Formal examination: within 30 days from the date of receipt of notice
Response period for substantive examination: within 15 days from the date of receipt of Decision of Refusal (Appeal against Decision of Refusal)

China’s trademark system has a system of partial refusal. If registration is not granted for a part of the designated goods of the applied-for trademark, the trademark is partially refused. In this case, unless an appeal against the partial refusal is filed, the other parts of the trademark will be registered.

For more information on the Chinese trademark system, please refer to our dedicated trademark website and the China Support Office.

Our services

When filing an application in China, you need to start by finding a reliable Chinese agent, and you are not comfortable with directly contacting a local agent at the first place.
We have partnered with a trusted Chinese agent to provide solid support for our Japanese clients’ trademark applications in China.
We also have Chinese attorneys and patent attorneys on staff, so you can rest assured that you can rely on us for procedures other than application filing.
Our China Support Office and our dedicated trademark website provide information on intellectual property in China.

If you wish to obtain a trademark in Japan before applying directly for a Chinese trademark, please contact us through Amazing DX.

Supervisor for the article:
Osaka Legal Strategy Department General Manager Akinori HACHIYA
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