Hello, this is IPLEX IP Law Firm.
China is a major consumer market for Korean businesses. Protecting a brand there requires attention to trademark rights as well as the quality of the products or services.
Even if you have already registered your trademark domestically, it will not have the same effect in China. Trademark rights are protected independently in each country, so securing rights in China requires a separate application process.
In particular, China adopts a first-to-file system, so in principle, the person who applies for a trademark first acquires the rights. Therefore, if you are planning to enter the Chinese market, it is advisable to review your trademark registration strategy before using your brand.
Why applying for a trademark in China is important
In China, who filed the application first is more important than the actual use of the trademark.
Even if a brand is already widely used in Korea, if a third party first applies for and registers an identical or similar trademark in China, a situation may arise where the brand cannot be used freely.
For this reason, companies preparing to enter China need to review whether to secure a trademark from the business planning stage, not after product launch or contract signing.
Main features of China's trademark system
- first-to-file principle
Chinese trademark law operates on the principle of first-to-file.
If identical or similar trademarks exist, the person who applies first has priority rights, so it is advantageous to secure rights by completing the application before disclosing the brand or starting marketing.
- Single-class and multi-class applications
China permits a single application for the same trademark in multiple classes. Separate applications by class may still be considered for procedural flexibility, depending on the filing strategy.
Additionally, if the number of designated goods exceeds a certain standard, additional costs may be incurred, so it is important to design the scope of protection according to the actual business plan.
- Limited examination response
In Korea, there is a relatively wide range of opportunities to persuade the examiner by submitting a written opinion after receiving a notice of grounds for rejection.
On the other hand, China has limited response measures available during the examination process. Therefore, conducting sufficient prior trademark research and reviewing the possibility of registration before filing an application can be a way to increase the possibility of registration.
- Hong Kong requires separate application
Hong Kong operates a separate trademark registration system from mainland China.
Therefore, registering a trademark in mainland China does not automatically protect it in Hong Kong, and if you plan to do business in Hong Kong, you must consider filing a separate application.
China Trademark Application Procedure
Generally, it takes about a year for a Chinese trademark to be registered after application.
The entire procedure proceeds in the following order:
- trademark application
- Application reception and acceptance
- Formalities and substantive examination
- Publication of the application
- Opposition period
- Decision to register
- Issuance of registration certificate
However, the actual time required may vary depending on the examination schedule and whether or not an opposition is filed.
What you need to prepare for application
When applying for a trademark in China, the following materials are generally required:
- Applicant's name or corporation name
- Nationality and address
- brand sample
- List of designated goods or services
- power of attorney
- For corporations, business registration certificate
- For individuals, a copy of your ID card or passport
- Relevant supporting documents when claiming priority
If you prepare enough necessary materials in advance, the application process can proceed more smoothly.
Things to keep in mind when filing in China
- Class 35 wholesale and retail service designation
In China, Class 35 wholesale and retail services are recognized as designated goods in a different way than in Korea.
For this reason, even if trademark rights for a product have been secured, there are cases where separate rights issues arise in relation to the name of the store or distribution service.
It is important to select products considering the type of business.
- Utilization of Madrid International Application
China can also be selected as a designated country through the Madrid International Trademark Application.
However, international filing is not the most efficient in all cases. It is necessary to select the appropriate method between individual application and international application by comprehensively considering the effectiveness of the basic application and the examination characteristics of each country.
Top Reasons Why Chinese Trademarks Are Rejected
The most frequent reason for rejection is that the trademark is identical or similar to an existing registered trademark.
In addition, registration may be restricted in the following cases:
- Cases that are identical or similar to public marks such as country name, national flag, national emblem, etc.
- In case of unauthorized use of the name or emblem of an international organization
- If there is a risk of deceiving consumers or causing misunderstanding about the quality or origin of the product.
- If it contains content that is against social order or public interest
- When using discriminatory or socially inappropriate expressions
Identifying these risk factors through preliminary research before filing can reduce unnecessary time and costs.
Although China's trademark system has some similarities to ours, there are significant differences in the actual application process and method of securing rights.
In particular, filing an application without fully understanding the first-to-file policy, goods classification practices, and characteristics of the examination process may lead to registration delays or rights disputes.
If you are preparing to enter the Chinese market, it is effective to review your trademark securing strategy from the early stages of your business.
If you are preparing to apply for a trademark in China, please consult with an expert to come up with a plan to secure more stable rights.
This article reflects the information available when it was published. Contact us to discuss your circumstances.