There are two ways you can apply to register a trade mark in China:
- A direct application to the Chinese Trade Marks Office (CTMO)
- An international registration designating China filed through the Madrid system.
If you want to file a direct application to the CTMO, you will need to appoint a Chinese trade mark agent who is registered before the CTMO.
This is not necessary for the initial stages of filing a Madrid application that designates China. You can read more about the Madrid system on our main page, Getting an international trade mark.
Registering trade marks in China can be complex. We strongly recommend seeking advice from an Australian trade marks attorney who has expertise and experience filing in China. Your trade marks attorney can guide you on the most appropriate filing method as part of your overall trade mark strategy, and assist you to register your trade marks in Australia, China, and other overseas markets.
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.
There are two main costs associated with a trade mark application – the official fees, and the 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
A Chinese trade mark attorney’s service fees vary between different agents, but a straightforward trade mark registration in a single class will often cost within AUD 1,000. Service fees may increase if an application is refused and additional work is required to try to persuade the trade mark office to accept the application.
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.
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
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 apply directly, 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.
Crafting a list of goods and services that will provide comprehensive coverage in desired subclasses is complex. Consider seeking experienced legal assistance with this.
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.
Chinese Language Trade Marks
Chinese language trade marks can be filed through a direct application to the CTMO, or through the Madrid system. However, for the Madrid system, the international application needs to be based on an application or registration filed in the country of origin. If Australia is the country of first filing (country of origin) this means you would need to ”base” the international application for the Chinese language trade mark on a “basic mark” filed in Australia, which must be the same trade mark. If you do not intend to use the trade mark in Australia, a direct application to the CTMO may be more suitable.
Your trade mark attorney can guide you on the most appropriate filing method for your situation.
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).
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.
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.
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, although Hong Kong is anticipated to join the Madrid system in the near future. As such, if you want trade mark protection in these territories, you will need to apply for trade mark registration directly.
These territories all allow you to claim priority from your Australian trade mark application provided you file within six months of the date on which the trade mark was first filed in Australia. You do not have to make a priority claim, and you can file an application directly at any time.
Like mainland China, Hong Kong and Macau provide an opposition period of three months from the acceptance and advertisement of the trade mark. Trade marks can be cancelled for non-use if they have not been used for a period of three years. Hong Kong provides a trade mark registration term of 10 years, and Macau provides 7 years. Trade mark registrations can be renewed indefinitely.
The Hong Kong IP department has more information on trade marks available in English at their website https://www.ipd.gov.hk/eng/trademarks.htm and their trade mark search system is available at https://esearch.ipd.gov.hk/nis-pos-view/tm#/tmSearch
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 a trade marks attorney can provide a professional search.
For more on enforcement in mainland China, see Enforcing IP in China.