A legal act regulating the principlestrademark registration in Chinais the Trademark Law of the People’s Republic of China of 23 August 1982. According to the Act, a trademark may include, for example, words, drawings, three-dimensional forms, colour combinations or melodies that distinguish the source of origin of the marked products and are not excluded from registration under the law.

The Act provides fora number of registration obstaclesboth absolute and relative. Among them, it is worth noting the following requirements:

. legal compliance – trademarkcan’t be identicalorsimilar to the name or logo of a Chinese government agency, or the logo or anthem of the Chinese military;must not contain content that discriminates against other nationalities; must not be similar to the name or flag of the People’s Republic of China or any other country, or be similar or identical to the name or logo of an international organization;

. distinctiveness – the trademark must be capable of being distinguishing goodsone entrepreneur from the goods of another entrepreneur, it may not directly indicate the goods or their properties, and it may not be misleading;

. trademark functionality – trademarks in this category include in particular:three-dimensional trademarks,if: (i) they result directly from the nature of the product/service, e.g. a typical chocolate shape cannot be registered as a trademark;(ii) they constitute a specific technical solution; (iii) they constitute a value in themselves when the appearance of a trademark has value regardless of the product;

. bad faith – the trademark cannot be filed in bad faith, e.g. by an entity that knows that it does not have the rightand is linked to the reporting person by a special relationship of trust (e.g. cooperation agreement);

. conflict with earlier rights – the trademark cannot be identical or similar to earlier trademarks protected in China,for identical or similar goods. A conflict may also exist with a well-known mark.

Before selecting a designation and filing a trademark application, it is worth examining the register of Chinese trademarks maintained by the CNIPA – China National Intellectual Property Administration to ensure that there are no potentially conflicting, earlier trademark rights. The register is available on the CNIPA website https://english.cnipa.gov.cn/

China’s trademark filing system issingle-class system.This means that it is not possible to file a single application in multiple classes. If you wish to obtain protection in several product or service classes, you mustmake several separate entries.In addition, each class is further divided into subclasses. Before filing, the utmost care should be taken in selecting the appropriate classes, taking into account the similarity of the goods, so that the widest possiblesecure your rights.

In the case of word or word-figurative marks, it is also necessary to consider filing a trademark application in Chinese script. For this purpose, the applicant should transliterate the mark into Chinese. Goods that are introduced to the Chinese market should be marked with Chinese script. This applies, for example, to food products that are offered directly to consumers. Recipients in China speak their native language and can develop their own Chinese name for a given product, outside the control of the right holder.

An application to CNIPA must be filed in Chinese, according to the provisions of the Trademark Law of the People’s Republic of China, through a Chinese patent attorney, unless we file an application in the international procedure, through WIPO. The office in China examines both relative and absolute obstacles to registration, and if they are found, calls on the applicant to make any changes or present arguments regarding these circumstances. If the office does not find any obstacles to registration, it publishes the application in the bulletin. At that moment, the 3-month opposition period begins. In the absence of objections, the procedure ends with the issuance of a trademark registration certificate.

The protection of a Chinese trademark lasts for 10 years. An application for extension of protection can be filed within 6 months preceding the expiry date.

It is worth remembering that Chinese trademarks are subject to revocation due to non-use if the mark is not used for a period of 3 years from the date of registration or if it loses its distinctive character.

When discussing the subject of Chinese trademarks, it is impossible to ignore the phenomenon of so-called trademark trolling, which is common on this market. This is a situation where a given entity (usually based in China) files a registration of someone else’s trademark on its own behalf with the CNIPA in bad faith. The purpose of such a registration is not the actual use of the trademark, but an attempt to obtain financial benefits from the real owner of the trademark (e.g. by selling the rights to the trademark). In such a situation, the originally authorized entity may have a problem using its own trademark in China. In addition, it may be forced to conduct proceedings before the CNIPA in order to regain its own brand (e.g. opposition based on a bad faith application).

In order to avoid unnecessary costs of such proceedings, it is worth securing your rights in China well in advance.