Introduction

China's regulations operate on a first-to-file basis and generally don't take into account trademarks registered in other countries.

Why Should EVERY brand file for a trademark in China?

This is a crucial legal step for international companies since China only recognizes trademarks registered inside its own jurisdiction. If the brand is well-known, trademark squatters, counterfeiters, and grey market providers will almost certainly be encountered. Adjudication is unlikely to achieve beneficial results unless the firm trademark is registered in China, and it will be time-consuming and costly in either case.

Regardless of whether they lawfully sell goods in other countries under that name or even if they produce in China to sell abroad, companies who take the risk of operating in China without a registered trademark in the region might easily lose their infringement claims.

Surprisingly, such businesses run the danger of being sued for trademark infringement by trademark squatters. Finally, holding a Chinese trademark protects enterprises from grey market suppliers and internet knockoff dealers, as well as allowing Chinese customs to seize counterfeit items.

How do foreign brand owners apply for a trademark in China?

Under the Madrid Protocol, foreign brand owners can submit trademark applications in China as national applications (CNAs) or international registrations (IRs). Each technique has advantages and disadvantages, and brand owners may find it difficult to choose a filing strategy. There are no easy answers to this question, but specification coverage is always one of the most important factors to examine, as specification determines the extent of a trademark registration's protection. Brand owners will surely benefit from a greater grasp of China's unique classification of products and services, as well as its examination processes.

China adopted the Nice Classification of Commodities and Services (now in its 11th edition, version 2020), an international system for classifying goods and services. The China National Intellectual Property Administration (CNIPA) has also established its own sub-class system, in which commodities and services listed under each Nice class are divided into sub-classes, with some sub-classes being further divided into groupings. The sub-classes, as well as descriptions of products and services in Chinese, are documented in a local standard classification handbook ("Chinese Classification Manual").

The Chinese Classification Manual is the primary source of information for CNIPA examiners. Essentially, the CNIPA examiners use the following guidelines:

1) Goods and services in the same sub-class are considered comparable (unless the Chinese Classification Manual specifies otherwise);

2) As defined in the Chinese Classification Manual, some items and services belonging to various classes and sub-classes are recognized as comparable and will be cross-searched with one another.

3) Non-standard descriptions of products and services are those that are not mentioned in the Chinese Classification Manual; and

4) During the substantive examination stage, an applied-for mark is usually only compared to identical or comparable prior mark(s) in the same sub-class or other sub-classes, or sub-group(s), if the products and services are judged equivalent.

In most cases, IRs identifying China have insufficient coverage of sub-classes. Reviewing the protection of IRs in China and determining if additional direct filing in China is required for protection and/or defence purposes is recommended.

CNAs or IRs? Which is the better road to follow?

For greater protection, it's best to register trademark applications for major marks through national filings and include as many sub-classes as feasible. This can dissuade squatters or bad faith filers from filing identical or extremely similar trademarks in sub-classes not covered by the brand owner's applications. This would necessitate filing a CNA application.

In trademark applications in China, it is advised that only standard descriptions from the current version of the Chinese Classification Manual be used. As a result, collaboration with local Chinese counsel is required to ensure the success of this strategy. By investing the effort up front, it is possible to avoid objections to non-standard descriptions, which will result in additional expenses and registration delays.

If a brand owner wants to include non-standard descriptions in a trademark application, he or she can submit an IR designating China, since the odds of an objection to non-standard descriptions are often smaller.

If a brand owner wants to include non-standard descriptions in a Chinese national trademark application, it's a good idea to include standard descriptions that are broad enough to cover non-standard descriptions as well. Knowing that there are generic descriptions that may conceivably encompass the disputed descriptions, the applicant might feel more at ease eliminating the objected non-standard descriptions or revising them to standard ones.

In most cases, IRs identifying China have insufficient coverage of sub-classes. Reviewing the protection of IRs in China and determining if additional direct filing in China is required for protection and/or defense purposes is recommended.

If a brand owner wants to cover retail services (except pharmaceutical, veterinary, and sanitary preparations and medical supplies) for a trademark, services like "sales promotion for others" and "provision of an online marketplace for buyers and sellers of goods and services," as well as the goods for which the mark is marketed, should be included. Before the CNIPA formally recognizes retail services, this may provide temporary protection or reasons for enforcement in China.

Conclusion

There is no such thing as an "international copyright" that protects a work all over the world. In a given country, protection against illegal usage is determined by the country's national laws. The main takeaway is that relying only on the goods/services description in your country’s application will almost certainly result in a different scope of coverage in China. Regardless of whether the brand owner utilizes a CNA or an IR, being proactive on this problem allows you to duplicate the breadth of coverage. Simply filing the identical goods/services as in any other country’s application may result in surprising coverage outcomes.

Please contact us (inquiries@ChinaLawSolutions.com) to get a recommendation on a firm which can assist your business with trademarks in China. All inquiries are treated as confidential.