Last updated: 
24 April 2020

Read more on trade mark basics at IP Australia’s main trade marks page.

A trade mark is a sign that distinguishes your goods or services from others. It’s usually a brand name or logo, but could also be other signs such as a shape or colour. Essentially, a trade mark is the IP right that protects your brand. Trade marks are many businesses’ most valuable IP rights.

Trade marks are territorial rights, meaning an Australian trade mark only provides protection in Australia. In order to protect your trade mark in China, you need to register your trade mark in China.

If you are doing business, selling products, or manufacturing in China, or there is a possibility you will do so in future, consider registering your trade mark in China as early as possible.

First to file

China has a first to file trade marks system. This means whoever first applies for a trade mark will generally then own the trade mark, regardless of who first used or developed it.

Unfortunately, the first to file system is exploited by trade mark hijackers, who register others’ trade marks in China. They usually do this to seek financial gain by selling the mark back to the original company, or to exploit the original company’s reputation with their own products.

Bad faith trade mark applications are the single most frequent IP issue affecting foreign businesses in China. It can affect businesses, no matter how big or small, across all industry sectors. Until you register your trade mark in China, you are vulnerable to someone else registering it. You can help prevent this issue by filing to register your trade marks in China as early as possible.

You may also find a legitimate competitor has already registered a trade mark similar or identical to your own. In 2018, China received 7.371 million trade mark applications (by class), and as of June 2019 reported a total stock of over 22.7 million registered trade marks. With such a crowded trade mark register, it’s important you don’t infringe others’ trade marks. Using your trade mark in Australia does not necessarily mean you can use it in China.

If you infringe a registered trade mark, the consequences can be significant. The trade mark owner may have your listings removed from Chinese e-commerce platforms, have your product taken off the market, or prevent your product entering or leaving China. You may be completely excluded from using the trade mark in the Chinese market.

If someone else registers your trade mark, you have a number of options. There are various grounds on which to challenge the registration of a trade mark, including that the application was filed in bad faith without intent to use the mark, or that the trade mark has not been used for a period of three years since registration (cancellation for non-use). It may sometimes be pragmatic to have your trade mark agent [1] arrange to purchase the trade mark from them. You may also consider rebranding for the Chinese market. Your trade mark attorney will be able to discuss which option is most suitable for your business, should these circumstances arise.

We suggest you seriously consider applying to register your trade marks in China before you do any business in China, visit China for business, exhibit at a trade fair, or communicate with a Chinese company. These activities all place you at risk of someone else registering your trade mark. Also be aware your product could already be for sale in China without your knowledge through daigou professional shoppers.

Be cautious of distributors or business associates who offer to ‘take care of’ your trade mark registrations on your behalf. You could lose control of your IP this way. We encourage you to manage the process yourself with the assistance of a legal professional who is expert in the Chinese IP legal system.

[1] In China, a trade mark agent must work for a trade mark agency or law firm registered with the Chinese Trade Marks Office. A trade mark agent is technically required by law to be familiar with trade mark law, uphold professional ethics, and provide good service to clients. However, there is no formal examination or qualifications required to become a trade mark agent, and service levels vary.

Goods and services classification in China

A trade mark gives exclusive rights only for goods or services for which it is registered. Consider registering your trade mark with respect to any goods or services you want to exclude others from using your trade mark.

Like Australia, China divides trade marks goods and services into 45 classes. Unlike Australia, however, China then divides these 45 classes into numerous subclasses, which can add complexity to the process.

A registration in one subclass will usually not prevent someone else registering in a different subclass. For example, a registration in subclass 2507 (Shoes) may not prevent someone else registering an identical trade mark for subclass 2512 (Belts).

A trade marks attorney can help you ensure your trade mark application’s list of goods and services covers the classes and subclasses that are important to you.

Maintaining trade mark registrations

If a Chinese trade mark is not used for a period of three years since registration, a third party can apply to have it cancelled for non-use. The trade mark owner then has to provide evidence of use of the trade mark in China. Your trade marks attorney can advise you how to avoid being vulnerable to non-use cancellation actions by documenting evidence of use of the trade mark in the Chinese market, or re-filing trade mark applications.

Chinese language brands

How will people refer to your product or service in China? Chinese people often prefer to use a Chinese language brand, and this could be useful for your business.

A Chinese language brand could be a phonetic transliteration of your English brand. For example, Coca Cola’s Chinese brand 可口可乐 kěkǒukělè sounds very similar to Coca Cola.

A Chinese brand could also be a translation of the meaning of the English brand. For example, Apple’s Chinese brand is 苹果 píngguǒ – literally the Chinese word for apple.

Some brands use a combination of transliteration and translation, for example Starbucks 星巴克 xīngbākè, whose Chinese brand is a combination of the Chinese character for star (星xīng) and a transliteration of bucks (巴克 bākè).

Branding consultants and some Chinese trade mark agents can help you develop an appealing Chinese language brand. As part of the brand development process, it’s important to check the Chinese trade mark register for existing registrations, so you are aware of any obstacles to your own registration before you invest too much in the brand.

Be sure to apply to register the trade mark in China before you reveal your Chinese language brand, or you risk someone else registering it and excluding you from using it.

If you don't develop a Chinese version of your brand, you may find that your customers, distributors, or manufacturers start using a Chinese variation of your brand. This can similarly place you at risk of someone else registering the variations as a trade mark.

How to register trade marks in China

Trade marks can be registered in China with a direct application to the Chinese trade marks office, or via a Madrid Protocol international registration designating China. An Australian trade marks attorney who has expertise and experience filing in China can advise you on the best options for your circumstances. See more at Applying for trade marks in China.

Searching the Chinese trade marks register

Doing a search of the Chinese trade marks register can identify if someone has already registered a mark identical or similar to your own. Knowing what has already been registered can reduce your risk of infringing other trade marks and save you wasting time and money on applications likely to be rejected. Our Guide to searching the Chinese trade marks register explains how to do a preliminary search yourself, and we recommend you ask a trade marks attorney experienced in Chinese trade mark law to provide a professional search.

Timing

The filing date of your application is important, as an earlier filed application will generally take precedence over a later filed application. Both direct and Madrid applications have the option of claiming priority from an Australian trade mark - see Priority claims below.

As of July 2019, both direct applications and Madrid applications were being examined around 5-6 months from the application date.

Cost

There are two main costs associated with a trade mark application – the official fees, and your trade mark agent’s service fees.

For a Chinese direct application, as of 1 July 2019, the official fee to register a trade mark is RMB 270 (approximately AUD 56) per class, with a fee of RMB 27 for each sub-classification item in excess of 10.

For a Madrid application, in addition to the basic application fee, designating China will cost additional fee/s depending on the number of classes across which the goods and services claimed are spread. Up to date information about fees, and a Fee Calculator, are available at https://www.wipo.int/finance/en/madrid.html

Chinese trade mark agent’s service fees vary, but a straightforward trade mark registration in a single class will often cost within AUD 1,000. If you are using an Australian trade mark attorney, they will also charge you a service fee. Costs may increase if an application is refused, and additional work is required to try to persuade the trade mark office to accept the application. Trade marks professionals should be able to provide you with a cost estimate before commencing any work.

Priority claims

China has a first to file trade mark system, so the filing date of a trade mark application can be very important. If you have previously filed a trade mark application in another country, you may be able to claim an earlier priority date based on that earlier filing, and, in some cases, claiming an earlier priority date can make all the difference, especially in a first to file trade mark system.

Australia and China are both members of the Paris Convention, which allows you to claim an earlier priority date on your international application providing your subsequent trade mark application is filed within six months of the date on which the earlier trade mark was first filed. The trade mark must be the same trade mark, and only the goods and services in the original application can claim the earlier priority date.

For example, if you file a trade mark application in Australia on 1 January 2020, you have until 1 July 2020 to file an identical trade mark application in China (or any of the 177 Paris Convention countries) and still claim a priority date of 1 January 2020. This can be particularly useful if a competitor, or bad faith filer, has filed an application for your trade mark in China within the six months of your Australian filing date. In this example, your earlier priority claim will likely act as a barrier to registration of the other party’s later filing.

However, if you file in China on 2 July 2020, which is more than six months from the first filing date in Australia, then you can no longer claim priority from the earlier application. Your earliest priority date will be the Chinese filing date of 2 July 2020.

Priority can be claimed both for direct applications to China, and Madrid registrations. A priority claim does not increase the likelihood of your trade mark application being accepted. You do not have to make a priority claim when filing an international application.

Goods and Services

A trade mark gives exclusive rights only for goods or services for which it is registered. Consider registering your trade mark with respect to any goods or services you want to exclude others from using your trade mark.

Most countries, including Australia, divide trade marks goods and services into the 45 classes of the NICE Classification system. China uses the NICE classification but divides the classes further into subclasses. For example, China divides NICE class 25 (Clothing, footwear, headgear) into 13 different subclasses including 2507 (Shoes), 2508 (Hats), 2509 (Socks), 2510 (Gloves), and 2512 (Belts).

For both direct applications and Madrid applications, it’s important to consider which goods and services to list to ensure you are covered in the classes and subclasses that are important to you.

For example, if your list of goods replicates the official NICE heading for Class 25 of “clothing, footwear, headgear”, you may only be assigned coverage in some of the subclasses related to these goods within Class 25. Gaps in subclass coverage can be an issue because a registration in one subclass will usually not prevent someone else registering an identical trade mark in a different subclass. For example, a registration in subclass 2507 (Shoes) might not prevent someone else registering an identical trade mark for subclass 2512 (Belts).

If you file a direct application to the CTMO, you will list the goods or services on your application. If you apply using the Madrid system, you can specify a list of goods and services for China that can differ to your main list of goods and services, so that your list for China covers the appropriate subclass(es). Note this specific list for China cannot expand the scope of goods and services covered by your original application.

A trade marks attorney can help you ensure your trade mark application’s list of goods and services covers the classes and subclasses that are important to you.

Examination

Examination processes are the same for direct and Madrid applications.

The CTMO will first check that the application and supporting documents meet formal requirements. They will then undertake a substantive examination to consider whether your trade mark meets the requirements of Chinese trade mark law, and identify any conflicting prior applications or registrations. They will then either accept or refuse the application.

If an application is refused, you have 15 days from receiving the decision to appeal for review by the Trade Mark Review and Adjudication Board (TRAB). You can also apply to extend the appeal period a further 15 days. While you will not retain the earlier filing date, you may also consider filing a new trade mark application in an effort to overcome any issues.

If the CTMO accepts the application, there is a three month opposition period during which others can oppose its registration. If there are no oppositions, or the oppositions are unsuccessful, the trade mark is registered.

A trade mark registration is valid for ten years, and can be renewed indefinitely. Note however that anyone can apply to have a trade mark cancelled if it is not used for a consecutive period of three years following registration.

Opposition and invalidations

Trade mark opposition and invalidation processes are the same for both direct applications and Madrid applications.

Once the CTMO accepts a trade mark application, other people or companies have three months from the date of acceptance to oppose the registration of the trade mark. If there are no oppositions, or the oppositions are unsuccessful, the trade mark will be registered at the end of this period.

If the CTMO dismisses an opposition, the decision is final and cannot be appealed. If the CTMO upholds an opposition, the trade mark applicant can appeal by requesting a review by the Trademark Review and Adjudication Board (TRAB) within 15 days of receiving the decision.

Any person can apply to the TRAB to request a trade mark be invalidated for violating Chinese trade mark law.
Oppositions and invalidations may be filed on the basis that the trade mark conflicts with an existing trade mark registration (relative grounds) or that the trade mark does not meet the requirements of the Chinese trade mark law (absolute grounds), such as that the application was filed in bad faith without intent to use the mark.

You can appeal opposition and invalidation decisions of the TRAB to the Beijing IP Court within 30 days of receiving the decision. Beijing IP Court decisions are themselves appealable to the Beijing Higher People’s Court. Each court appeal may take 6-12 months.

Certificate of Registration

A certificate of registration provides evidence of your Chinese trade mark registration. This is often required in order to enforce your trade mark in China.

If you have registered your trade mark through a direct application, you will automatically be issued with a certificate of registration. If you have registered your trade mark through the Madrid system, the certificate is not automatically issued, but can be requested for a fee from the CMTO. The process may take several months. We recommend you seek such a certificate at the earliest possible opportunity.

Maintaining trade mark registrations

If a Chinese trade mark is not used for a period of three years since registration, a third party can apply to have it cancelled for non-use. The trade mark owner then has to provide evidence of use of the trade mark in China. Your trade marks attorney can advise you how to avoid being vulnerable to non-use cancellation actions by documenting evidence of use of the trade mark in the Chinese market, or re-filing trade mark applications.

Use of the ® symbol in China

In China, like most other countries, it is illegal for a trade mark to use the ® symbol unless that trade mark has been registered in China. A trade mark registration in Australia or another territory does not permit use of the ® symbol in China.  

Misuse of the ® symbol in China may attract fines or other penalties. Australian exporters who do not have a trade mark registration in China may choose to reduce this risk by removing or covering up the ® symbol. Your trade marks attorney can advise you further.

Original Equipment Manufacturing (OEM) exception to trade mark infringement

If a company is manufacturing in China exclusively for export, and not selling product in China, it may under some circumstances be able to defend against a claim of Chinese trade mark infringement. However, the legal guidance around the ‘OEM exception’ frequently changes, and companies should seek legal advice for their specific situation.

Guidance from China’s Supreme People's Court in April 2018 in the Dong Feng case was that branded products produced in China exclusively for export will generally not infringe upon Chinese trade marks, as long as the goods are not put into commercial circulation within China, and the exporter is the legitimate owner of the trade mark in the destination market. However, in the HondaKit case in October 2019, the Supreme People's Court appeared to change its position, ruling that products manufactured exclusively for export could infringe a Chinese trade mark, as the goods could circulate internationally and become available in the Chinese domestic market.

Whether an ‘OEM exception’ is available to a brand owner will depend on the latest legal guidance and the facts of each case. Australian companies manufacturing in China can minimise their risk by registering trade marks both in China and in destination export markets.

Enforcement

For more on how to enforce your trade marks against infringers in mainland China, see Enforcing IP in China.

Hong Kong and Macau

Trade mark registration in Hong Kong and Macau are each separate from mainland China. At present, neither territory are members of the Madrid system. As such, if you want trade mark protection in these territories, you will need to apply for trade mark registration directly. For more information, see IP protection in Hong Kong and Macau