Similar to many other countries, Chinese trademark registration can be completed through two main methods:
Registering an international trademark via the Madrid system, with China designated as a country of protection.
Filing a national trademark directly through an intellectual property agent in China.
China follows a first-to-file rule for trademarks. This means that the first person to apply for a trademark, rather than the first person to use it, is recognised as the rightful owner, with few exceptions.
Why Opt for Direct Registration?
Registering a trademark in China through the World Intellectual Property Organization (WIPO) using the Madrid system can take between 9 to 18 months. In contrast, applying directly for a Chinese trademark registration may take only 6 to 9 months, provided the application meets all requirements.
Applicants should also be aware that China uses its own Classification of Goods and Services. If goods or services are classified according to the Nice International Classification without accounting for China’s classification system, the application might be rejected. This is particularly common for retail services under Class 35 of the Nice Classification.
China’s Trademark Classification System
The China National Intellectual Property Administration (CNIPA) uses a unique sub-classification system. Each Nice class is divided into sub-classes, some of which are further subdivided. The specific sub-classes are outlined in the "Chinese Classification Manual," which contains detailed descriptions in Chinese of the relevant goods and services.
This approach is common across several Asian countries, including Japan, South Korea, and Taiwan, where similar systems are used to ensure consistency during Chinese trademark registration examinations.
Key Considerations for Class 35 Service Trademarks
Class 35 primarily covers services related to business management, administration, and advertising. It is often referred to as an “all-purpose class” in China, and many businesses register their trademarks in Class 35 to meet requirements from e-commerce platforms or shopping centres.
In December, CNIPA issued new guidelines clarifying the use of Class 35 service trademarks. These guidelines emphasise that Class 35 covers services provided to others, not services related to the trademark owner’s business. For example, selling goods under a brand name is not included in Class 35. Similarly, advertising services in this class refer only to services offered to third parties, excluding self-promotion.
Importance of Accurate Designation Language
The language used to describe goods and services in a Chinese trademark registration must be precise and clearly distinguishable from other categories. Vague or overly broad terms can lead to confusion and possible rejection. For instance, the term “e-commerce services” is too broad and could refer to various activities across different industries.
Applicants should use descriptive language to specify details such as the function, materials, or distribution channels of goods and services. This helps ensure the correct classification during the Chinese trademark registration process.
Common Issues with Classification in China
(i) Incorrect Categorisation of International Registrations (IRs): When an International Registration is extended to China, CNIPA examiners assign sub-classes for the goods and services without consulting the applicant. This can result in sub-classes that do not adequately cover the brand’s key products or services, or incorrect translations of descriptions. Because goods in different sub-classes are often considered dissimilar, incorrect classification can weaken the trademark’s protection during Chinese trademark registration.
(ii) Gaps in Sub-classification: International Registration specifications often do not align with China’s sub-class system. For example, Class 25’s general description of “clothing; footwear; headgear” may not cover specific items like socks, scarves, or belts, which fall into different sub-classes in China. This creates gaps in trademark protection, allowing infringers to register similar trademarks in uncovered sub-classes, potentially undermining the brand’s rights under Chinese trademark registration.
Woodburn Accountants & Advisors is one of China’s most trusted business setup advisory firms.
Woodburn Accountants & Advisors is specialized in inbound investment to China and Hong Kong. We focus on eliminating the complexities of corporate services and compliance administration. We help clients with services ranging from trademark registration and company incorporation to the full outsourcing solution for accounting, tax, and human resource services. Our advisory services can be tailor-made based on the companies’ objectives, goals and needs which vary depending on the stage they are at on their journey.
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