Last updated: 
6 December 2019

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.