China Trademark Registration Q&A – Harris Bricken Sliwoski LLP

As regular followers of this blog well know, we quite often stress the importance of registering trademarks in China, and the need to do so promptly. See for example China Trademarks: More Useful and More Necessary Than Ever. Today, I want to address some of the questions our China trademark attorneys fairly regularly get about China trademark registrations.

1. Does your law firm’s China trademark registration flat fee include all additional responses to obtain final determination where registration is initially refused?

The China National Intellectual Property Administration’s (CNIPA) interactions with trademark applicants are very limited. In that way it is very different from the United States Patent and Trademark Office (USPTO). The only kind of response that is sometimes required is an amendment of the description of goods and/or services, if the examiner disagrees with the wording. Such a response would be included in the flat fee.

However, an appeal of a refusal would be a separate proceeding and is not included in the flat fee.

Along the same lines, responses to an opposition filed by a third party are not included in the flat fee for China trademark registration.

It is worth mentioning that the best way to avoid having to amend a description of goods and/or services is to use terms found in the Nice Classification (see next question if you are wondering what the Nice Classification is). This is another way in which CNIPA practice departs from that of the USPTO, which generally does not mind if applicants provide their own descriptions.

2. What is the Nice Classification?

The Nice Classification is an international classification of goods and services that separates the universe of goods and services that can be included on trademark registrations into 45 classes. Nice refers to the French city of that name, where in 1957 an international agreement establishing the classification was signed. The classification is administered by the World Intellectual Property Organization (WIPO) and is pretty much followed universally, greatly facilitating the registration of trademarks across borders by brands.

Unfortunately, adding trademark classes invariably means additional fees. For this reason, brands on a budget sometimes opt to leave certain goods or services out of a trademark application.

3. What are trademark subclasses?

China divides each Nice class into subclasses, and treats each subclass as a discrete unit. A trademark registration gives the owner rights in the covered subclasses, but virtually no rights in any other subclasses. Read more in China Trademarks: Subclasses and Basic Numbers.

4. Can the flat fee for China trademark registration be reduced by skipping the trademark search?

Yes, but we generally recommend running a trademark search, also known as a trademark clearance, before applying to register a trademark. Skipping the search will save a couple of hundred dollars, but it means not finding out about certain obstacles to registration until the application is examined by CNIPA, a few months down the line. And, in case you’re wondering, all fees are nonrefundable.  

It makes far more sense to catch any problems before applying, as that will give you more options to obtain a China trademark registration. For example, it may be possible to challenge an existing registration on the basis that it has not been used for three years. Or, you may decide to rebrand. If the conflict is with your logo, you can consider registering your name instead; if the conflict is with your name, you can consider registering your logo instead, or a slogan. And so on.

4. Tell me more about these cancellations for non-use.

According to Article 49 of the Trademark Law, if a registered trademark has not been put in use for three consecutive years without a justifiable reason, any entity or individual may apply to the trademark office for cancellation.

Determining whether to file a non-use cancellation (NUC) turns on whether a conflicting trademark is actually being used in commerce. Historically, CNIPA has set a very low threshold for establishing that the mark was used in commerce, with any minor instance of usage being enough to fend off an NUC. Recently, however, CNIPA is getting a little tougher.

NUCs can be a very useful tool when a conflicting mark is getting in the way of your China trademark registration. The three-year requirement can seem a bit long at times, but keep in mind that, during that time, other parties will be prevented from registering the mark as well.

5. Is use of the mark in commerce required for China trademark registration?

No. Actual use is not required for trademark registration in China, in marked contrast with the United States. If you register a mark, and do not use it for three years, then as described above the mark is vulnerable to a NUC request. However, in the absence of such a request, CNIPA will not inquire about the use of a mark nor require proof of use.

6. Is there required trademark maintenance?

Yes. China trademark registrations must be renewed every ten years. However, there is no need to file declarations of use, as in the United States.

7. Other than an existing prior registration, is there anything else that could derail a China trademark registration?

Yes. As is the case in the United States, CNIPA will reject applications that it considers to be descriptive or misleading. In addition, it will deny certain applications on public policy grounds. For instance, pursuant to China’s ban on cryptocurrencies, CNIPA will deny trademark applications that describe crypto-related goods or services.