It is best to apply the first-to-file approach for trademark registration in China.
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1. Find a trustable trademark agent
Any overseas individual or entity who wants to go for trademark registration in China needs to hire a trademark agent to do so. Though you can easily find a lot of consultancy companies online claiming that they can do it for you, and some of them charge an unbelievable low price but be careful.
The law does not require that only a lawyer can be an agent for trademark registration in China, however, experience and qualification of the agent definitely is something very important. Obviously, experience and professional skill instead of a good price should be the main elements when you choose the agent.
You thought you could save some money by choosing a cheap agent. But more than often, you will find the terrible service actually cost you more in terms of money or time, or even worse, you may lose your trademark forever! ( In step 3, we will show you why it’s important to choose a qualified agent.)
2. Prepare the required information for your trademark registration
1) Usually, a trademark is a Logo–graphic trademark, or text (which need to be in a specific font) or a combination of both;
2) Copy of the passport, if the applicant is an individual or copy of the certification of incorporation if the applicant is an entity;
3) Name and address of the applicant;
4) List of items(product and/or service) the trademark applies to, you may check the Nice classification to choose the suitable items. http://www.wipo.int/classifications/nivilo/nice/index.htm
3. The agent will review it and give counsel accordingly
This step is very critical and that’s why a qualified agent is so important. Because they will review your trademark in two ways, just as a reviewer in the Chinese Trademark Office (CTMO) do:
For trademark registration in China, the agent searches the governmental database for identical or similar trademarks that are already registered. The agent also checks for trademarks that have been applied for both preliminarily approved and pending approval (but not yet registered). Search in the database seems an easy job. But knowing how to do a cross-search and to analyze the result correctly needs experience. An experienced agent also could offer a proposal for better and comprehensive protection of your trademark.
Review to decide if it’s in conformity with the Trademark Law in the following three aspects:
（1）Legality.
For example, it could not be identical with or similar to the State name, national flag, etc.; nor detrimental to socialist morality and custom or having other ill effects;
（2）Distinctiveness.
A sign can not be registered as a trademark if it consists;
only of a direct representation of the quality,
primary raw materials,
or it consists only of generic names of the goods concerned.
For example, you can not apply for “milk powder” as the trademark for infant formula, or “sweet” for candy;
（3） Non-functionality.
A sign shall not be registered as a trademark if it tells the function of your product or service, for example, you can not apply for “detective” for your detective service.
An experienced agent will review your trademark and analyze the search result and evaluate the application thoroughly and advise of a possible solution. While a terrible agent will just submit your application to the CTMO and then one year later inform you that your application has been rejected.
4. Timeframe and procedure
The CTMO will initiate a substantial examination as described in step 3 once your application is submitted. It may take three months to do it.
If the examination reveals that the trademark application is in conformity with the Law and that there is no other prior trademark, your trademark application is preliminarily approved and will be published in the Official Gazette for three months.
The registration will be approved if no opposition has been filed in these three months and a certificate of the trademark will finally be issued. The total timeframe will be one and a half year.
Source: Sophie Mao from ChinaLawHelp.com
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