Practical Tips for Trademark Protection in China
| Author | Nina Li |
| Position | Nina Li is a partner at IP March (formerly Co-Talent Intellectual Property Firm) in Beijing, China. She specializes in matters related to trademark, copyright, domain name, and custom protection. She can be reached at nli@ipmarch.cn. |
| Pages | 27-56 |
Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
September/October 2019 n LANDSLIDE 25
Practical Tips for
Trademark Protection
in China
By Nina Li
Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
C
ompared with most of the Western
countries, the trademark protection
history in China is relatively short. Chinese trademark
law and practice have been constantly evolving since
the rst trademark law came into effect in 1983. Due
to the differences in laws and protection systems,
people outside of the country have difculty under-
standing the trademark protection situation in China.
This article shares some practical tips that are very
important to developing trademark
protection strategies in China.
Consider Chinese Subclasses
Like many other countries, China uses the NICE Classication
system. However, a key difference in Chinese trademark practice
is the use of subclasses. The Chinese Classication Table for Simi-
lar Goods and Services (Chinese Classication) is the main criteria
that examiners in China adopt in determining whether goods and
services are similar. The Chinese Classication is mainly based on
the NICE Classication but includes nearly 2,000 additional goods
and services that are commonly used in China. Such goods and
services include “hair mousse” in class 3, “refrigerator deodorant”
in class 5, “mashed potato” in class 29, and “housekeeping ser-
vice” in class 45. Goods and services in one class are divided into
subclasses. For example, within class 7 there are 54 subclasses,
and within class 25 there are 13 subclasses.
Foreign applicants often ask why some identical or similar
marks have coexisted in the same class. The reason is, accord-
ing to the Chinese Classication, their designated goods or
services are dissimilar. Generally speaking, goods and services
that fall into different subclasses are considered dissimilar
even though they belong to the same NICE class. For instance,
“shoes” and “hosiery” are considered dissimilar, as are “caps”
and “scarfs,” although they all fall into class 25. Furthermore,
in some subclasses, goods and services that fall into different
parts are dissimilar. For instance, “thermal adjustment device”
and “lightning arrester” are dissimilar although they both
belong to the same subclass 0914. Therefore, in most cases, for
a trademark registration in China, the more subclasses it covers
the wider protection scope it obtains.
However, goods and services can also be similar even though
they fall into different classes. For instance, “movements for clocks
and watches” in class 14 is similar to “smart watch (data process-
ing)” in class 9, and “steel pipes” in class 6 is similar to “heating
installations” in class 11. Thus, it is important to take subclasses into
consideration when ling trademark applications in China.
Perform an Availability Search before Filing
When applicants start to plan on ling a new trademark application
in China, the rst thing they should consider is an availability search.
With a reliable search report, the successful registration rate of the
mark can be estimated relatively accurately. If a prior identical or
similar mark exists, necessary action can be taken beforehand.
When a new trademark application is blocked by a prior
mark(s), it is common to take necessary action such as nonuse
cancellation, opposition, or invalidation. However, according
to current practice in China, the average examination speed for
appeals against provisional refusals is faster than the examina-
tion speed for nonuse cancellation, opposition, or invalidation
cases. Besides, according to Chinese trademark law, within
one year from the time when a registered trademark is declared
invalid, the trademark ofce will not approve any application for
registration of a trademark identical with or similar to the invalid
trademark. If any decision on the nonuse cancellation or oppo-
sition is appealed, it will take even longer to wait for the results.
Therefore, if an action such as nonuse cancellation or opposition
is initiated after the application date of a provisionally refused
mark (not the date of the appeal against the provisional refusal),
the National Intellectual Property Administration, PRC (CNIPA)
probably will not suspend the appeal case against the provisional
refusal so as to wait for the results of the action.
As the Beijing IP Court has also accelerated its examination
speed for administrative lawsuit against adjudication on appeal
of provisional refusals, applicants are encouraged to on the one
hand try to keep the rst application alive as long as possible and
on the other hand le a backup application while waiting for the
results of the nonuse cancellation or opposition case. However, if
such actions are taken against the prior conicting marks before
the ling date of the applicant’s own trademark application, the
examiners in the appeal procedure against the provisional refusal
concerning the application are more likely to wait for the results.
Therefore, if a pre-ling availability search is done and neces-
sary actions can be taken against prior obstacles beforehand, the
applicant usually will be in a better position.
Evaluate Advantages of Filing Single-Class vs. Multi-
Class Application
Since the third amendment to the Trademark Law of the
People’s Republic of China took effect in 2014, multi-class
applications are acceptable in China. Before then, the Chi-
nese trademark ofce only accepted single-class applications.
However, according to current practice in China, there are
obvious disadvantages to ling multi-class applications.
First, for national multi-class trademark applications, when
ofcial notication of provisional partial refusal is issued, a divi-
sional application form will be attached. If the applicant would
like to divide the application, it can execute and submit that appli-
cation form to the trademark ofce within 15 days. The division
is only possible between the provisionally refused part and the
provisionally approved part. If an appeal is led and a divisional
application is also led, the application with the provisionally
approved items will generate a new application to be published
with a new application number but reserving the original appli-
cation date. For purposes of the appeal proceeding before the
CNIPA, the original ling number will be reserved for the applica-
tion in respect of the provisionally refused items due to the partial
refusal. If an appeal is led and a divisional application is not
requested, the whole application with the provisionally approved
item cannot move forward to publication and registration until the
CNIPA makes adjudication on the appeal. However, if the appli-
cant would like to abandon the provisionally refused part, there
Nina Li is a partner at IP March (formerly Co-Talent Intellectual
Property Firm) in Beijing, China. She specializes in matters related
to trademark, copyright, domain name, and custom protection. She
can be reached at nli@ipmarch.cn.
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