How to file a trademark in China

Foreign applicants are not allowed to file the application by themselves. Appointing a local Chinese trademark agency is a must. However, it is still important for you to understand how to work together with your trademark attorney.

Step 1: conducting a trademark search

Trademark search is charged most of the time by your Chinese tademark attorney. If you would like to conduct a search on your own and avoid the search cost. Please follow my advice on: how to conduct trademark search on CTMO database.

Step 2: confirm the specimen of the trademark

A word trademark, a logo trademark or the combination of them make the result quite different. Generally, I always suggest to file the way it is actually used. Or, if budget is not of concern, file two separatetrademarkwith the two forms. A word mark guarantee the broadest protection and a logo mark show the genuine use avoid of possible non-use cancellation.

Step 3: confirm the goods/services

China trademark classification system is based on the NICE classification system and has some modification. China has developed a sub-classification system for each of the 45 classes.  The goods/services in each class are divided into several subclasses according to their function and/or raw materials and sales channels while services are divided based on their content and target consumers.  Generally goods falling into the same sub classes are considered similar to each other.  Likewise, goods falling in different sub classes are not considered similar. 

The sub-classification system not only means that goods/services are further categorized into different sub-classes of the main class heading, but all goods/services applied for have to comply with the goods/services listed in the Chinese Sub-classification Book.  If the goods/services applied for are not specifically listed (i.e “standard terms”) they are likely to be rejected.  Unfortunately, unlike many other countries, this often means selecting goods/services that are “closest” to the specific goods of interest – as the list is somewhat limited.

This is why your trademark attorney always modified your selected items of goods/services. Actually, you can also stick to the non-standard items if you don’t mind a possible office action. There is still a chance for the non-standard item to be accepted by the examiner. If not, an office action will be issued to modify the specification. It will a) delay the examination period for around two months. B) additional cost charged by your Chinese trademark attorney.  

Step 4: confirm the name and address of the applicant both in English and Chinese

The name and address of the applicant must be strictly identical with those of the company incorporation certificate or the passport for individual applicant.

The Chinese translation of the name and address is a compulsory requirement. If you do not have one, ask your trademark attorney to advise one. It is usually free of charge or the service fee included in the application fee.

Step 5:prepare the required documents

When the above are all confirmed, your trademark attorney will most likely send an power of attorney for your sign. Here is all the documents required for the application:

Document 1. Application Form (not required by online application);

Document 2. Scanned copy of the Power of Attorney (POA) signed by the applicant;

Document 3. Scanned copy of the applicant’s certificate of incorporation / certificate of good standing; (passport for individual applicants).

When all the documents are prepared, your trademark are ready to be submitted. As China is a first-to-file country, a prior application date means a lot for a trademarkregistration. Your trademark attorney will usually file the trademark within 2 working days.

Here is the procedure and timelines for the examination:

I drafted a flow chart for your better understanding:

1. Obtaining official receipt: around 2 weeks (online application);
2. Obtaining the notification of publication: around 9 months;
3. Obtaining the notification of registration: around 12 months;
4. Obtaining the hard copy of the registration certificate: around 14 months.

Costs

Official fee:  $ 48

Note:There would occur additional official fee of USD 4.8 per item for the designated goods/services in excess of 10 in one class

Attorney fee:  $ 50-$ 500

It varies depending on the agency or attorney you choose. Generally speaking, the attorney fee varies from USD 50 to USD 500. I generally do not suggest choose ether the cheapest one or the most expensive one.

Here is the time spending on one application

1 hour: English communication confirming all details by foreign related trademark attorney:

0.5 hour: Filing the application by a paralegal:

0.3 hour: Reporting the application

0.3 hour: Reporting the official receipt

0.3 hour: Reporting office action (if any)

0.3 hour: Reporting publication

0.3 hour: Reporting and forwarding the registration certificate.

Don’t you think it worth at least USD 150?

Generally, it would be better if your trademark attorney is also a lawyer. Trademark application and the subsequent prosecution and enforcement are a kind of legal work. That is why some of my clients choose my service because I am a lawyer and the service is cheap.

How to choose a local Chinese trademark agency

Two options, Chinese IP agency or Chinese Law Firm.

If you choose an IP agency, it is possible that the agency can only deal with application issues but can not be of more help providing valuable advice in legal respective.

If you choose a Law Firm, it is possible that it is a comprehensive Law Firm and IP is not the core area.

The better choice is an IP agency who also owns a Law Firm. It means that they are specialized in IP service and has legal background.It is not cheap of course.

You can also ask your local trademark agency to help with trademark application in China. They usually have outside adviser or cooperating IP agency from China. It is not the most cost effective way of course.