A Primer for Intellectual Property Registration in China
Trademark
The main problem a foreign entity faces in China is that it is a "first to file" country. This means that the first company to apply for trademark registration, whether Chinese or foreign, will obtain registration and can prevent others from using the trademark. There is no requirement to have any intention to use the trademark when filing the mark. In some instances, a foreign company has entered the Chinese market only to find that a competitor has already registered their trademark and is demanding payment for transfer.
Chinese law does provide grounds for opposing a filed application or canceling a registered trademark. However, procedures can be costly and time-consuming, and success often requires proving bad faith in the initial application. Being the first to file is always the cheapest and most efficient way to secure your trademark.
Applications should be filed with the China National Intellectual Property Administration (CNIPA) through a recognized agent. While filing costs are low, the benefits are substantial.
China follows the "NICE Classification" system with applications made on a per-class basis. Depending on your intended use across goods and services, you may need several independent applications.
Key Steps for Trademark Protection:
Copyright
Copyright protection in China arises automatically for works first published or originated in China. As a signatory to the Berne Convention, China offers the same protection to foreign works created outside China.
Protection Duration:
While not mandatory, copyright can be recorded with the National Copyright Administration of China. This requires submitting evidence of ownership and creation date. The small cost of obtaining a copyright certificate often proves valuable in ownership disputes.
Important Note on Employment-Related Copyright: Unlike many jurisdictions, in China, copyright generally belongs to the employee if created during employment. However, for two years post-creation, the employee cannot license the work without employer's consent. Companies can modify this through specific provisions in employment contracts.
Patent
China's patent system is also "first to file," accepting applications from both corporations and individuals.
Three Types of Patents:
The design patent parallels European registered designs, while the utility model serves as a "mini-patent" similar to the German system, requiring lower inventiveness levels.
Only invention patents undergo CNIPA's substantive examination. Typical timeline:
Companies can simultaneously file for invention patent and utility model protection, later abandoning the utility model once the invention patent is granted.
As a Patent Cooperation Treaty (PCT) signatory, China accepts PCT applications through CNIPA's national phase procedures.
Important Considerations:
(By Dr. Jian Xu. Last updated: Nov 2024)
IP Books
- This article is an excerpt from my E-book, '365 Intellectual Property Tips for China: A Comprehensive, Strategic, and Practical Guide for Legal Professionals' available on Amazon. You are welcome to check it out (and read it for free if you are a Kindle Unlimited subscriber).
- Alternatively, you may check out my China Intellectual Property Series (4 book series), which consists of my China Patent, Trademark, and Copyright Law Handbooks, in addition to the above 365 China IP Tips.
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- You are welcome to subscribe to my LinkedIn newsletter "IPChina: Dr. Jian Xu's newsletter for understanding IP and China better!" I will keep you updated on China IP knowledge, insights, trends, opportunities, and more.
Contact
- Should you have any questions on China IP, please feel free to contact me: [email protected]