If you are doing business in or with China you should give serious thought to registering your trademarks in China. In particular, you should consider a China trademark registration for your trade-name, your logo and your service marks. Brand identity is critical for success in China (as it is just about everywhere) and if you are going to protect your trademarks in China, you must register them. This is especially true in China where if you do not register your trademarks, someone is almost certain to try to appropriate them.  If you have not taken the necessary steps to protect your brand, this theft will succeed. 

This post explains why trademarks are so important for creating your brand in China. Your trademark is what conveys who you are.

No matter what the drink, if it has Coca Cola’s name on it, you know that the odds are overwhelming that it will have been well made and be safe. Westin on a building tells you before you go in that it is a nice hotel. Think how damaging it would be to Coca Cola or to Westin if everybody could use those two names on their products, be they drinks or hotels. None of this is any different in China.

Unlike the United States, however, China employs a “first to file” system for trademark registration. This means that China does not recognize unregistered trade mark rights. So you must register your trademark to have any trademark protection. Without trademark protection, someone else can register “your” trademark and then prevent you from using it. This is true even if you are not conducting any sales in China. Even if all you are doing is manufacturing product in China, someone else can (and probably will) register “your” trademark and then stop you from exporting anything from China with that trademark on it unless you pay a licensing fee. This happens all the time and it mostly happens to companies from common law “first to use” trademark registration systems. It happens less often to European companies because they usually know better because they come from a first to file system.  

All of this means that you should register your trademark or service mark before someone else beats you to it. In other words, you should register your trademark or your logo before you first start using it in China. If you know you will be using your trademark or logo in China, there is no benefit (other than cost delay) in waiting. 

The first to file an application in China for a particular trademark gets priority to that trademark, but it can take years for the Chinese trademark office to actually issue your trademark. In the meantime, nobody can stop you from using the trademark for which you applied, but you cannot stop anyone else from using it either. So if you are planning to sell a trademarked product or service in China at some point in the future, there are real benefits to going ahead and registering for the trademark right away. That way you will either have it when you start selling or very soon thereafter.

Even if you are just manufacturing a product in China and are not selling it there, you must register your trademarks on that product before anyone else. This is because if someone beats you to “your” trademark, they will be able to stop you from using it in China at all and block your product (with the offending trademark) from leaving China’s ports. 

But what exactly should you trademark and how?

You should trademark anything that identifies your company or your brand or your product or your service that you can. If your company is Premier and your product is Alpha and your logo is a giant A and you sell a special sort of cloth headband, you should at least consider registering the following trademarks:

  • The word “Premier” in Roman script
  • The word “First” in Chinese characters
  • The Mandarin word that sounds closest to “Premier”
  • The logo

If you do not choose a name in Chinese and register it, the Chinese consumer will almost certainly choose a Chinese name for you and you may find you do not like that Chinese name one bit or that the trademark on it has already been taken.

There are essentially three methods for picking your Chinese name. You can translate your English or other foreign name directly into Chinese. Registering the word “first” in Chinese characters is an example of that. The disadvantage of a literal translation is that you will essentially have two different names for your same product or company and this can cause confusion in the market. The second option is to use a Chinese character name that sounds like your foreign name. If you go with a phonetic version of your foreign name, you must make sure that you know what the Chinese characters you are using actually mean in Mandarin and Cantonese. Otherwise, you might find yourself with a Chinese name that means something you really do not want to be saying. Oftentimes, the best solution is to choose a phonetic version of your name that also conveys something you wish to convey.  Coca Cola is the classic example of this. Its name sounds like  “Ke Kou Ke Le,” which means “delicious” and “happy.” 

You will also need to consider in what category(s) to register whatever trademarks you deem necessary from the above. Returning to the example of the headband, there are at least two categories that make sense: hair accessories and clothing. If you register your trademarks in just one, you leave a massive opening for a competitor to step in and register the your same trademarks on the same product in the category you did not choose. If that happens, both of you will be able to sell the headband using the same trademarks. Not choosing all of the right categories for your trademarks can be as bad as not registering your trademarks at all.

  • henry

    where do you apply for copy-write.

  • Thanks for the info! I am considering having a product manufactured in China in the not so distant future. Since I wasn’t planning on selling it in China, I never thought it to be important to trademark there as well. But apparently it’s VERY important! Any chance you’d consider doing a follow up blog on the process one might go about doing to get their trademark in the system from overseas?
    Thanks again! Great read!

  • Hi Dan,
    First time on your blog and thank you for this helpful resource on a topic that many traders would like to know about.
    Indeed plenty of entrepreneurs have their products manufactured in China and will get the impression that a trademark won’t be necessary. It is equally important to communicate and practice due diligence with the manufacturer to avoid complications.
    Would you have a ball park figure of how much a trademark registration in China can cost?

  • DLW

    Dan & Steve,
    Do you folks recommend that your clients also register the name in Pinyin, as well as in simplified Chinese characters and “western name” (be it English or whatever)? I find that lawyers seem “split” on this (many claim it’s not necessary, or “overkill”), but without the Pinyin registration, a would-be infringer could then register a same/similar Pinyin name, and use that, and then pressure the client to purchase it at disproportionate cost. What do you guys think?

  • ceh

    Note that like Coca-Cola, the best Chinese-language TM is not necessarily the one that sounds closest (you could have kou ka kou la, which could have all manner of less flattering meanings. This is not as important for products that don’t have any likelihood of being sold in China, but you might spend a few bucks hiring a consultant to find a good Chinese name for your brand.

  • Jacob

    Great post, thanks for sharing. I’m also very interested in the registration process. I’ve been looking around at a number of agents, and the going rate seems to be around 500USD per trademark – do you think this is a reasonable price? Is it easy/possible to go through the process ourselves (being fluent in Mandarin)?
    Thanks for your help!
    Jacob.

  • SP

    Incredibly helpful. Thanks.

  • Dan

    @DLW,
    Pin yin is not a language; it is a transliteration device. Registration in Pin Yin is therefore treated just like registration in English or in German. If a company uses Pin Yin in their trademarking, then it should be registered. If not, then the registration is meaningless. Chinese character registration covers any use of the characters, regardless of the pronunciation. If the Chinese language is what is intended, then characters are all you need. There are literally hundreds of possible dialect/language pronunciations of any given character. Registering the characters covers all of those possible variations in pronunciation.

  • Dan,
    great post, thanks. We registered our trademark some months ago and it was all pretty straight-forward. I seems that an intermediary is required though (I did my WFOE registration myself, not ideal, but certainly possible). One thing that surprised me though is that we were told we cannot trademark a name that is too generic, like a letter + the product name (e.g. “B Computers”)
    One question: Do you know anything about the Madrid Agreement and how it applies to China? My understanding is that PR. China is part of this agreement but is a trademark registered in a member country and then extended to cover China really covered to the same extent? Thanks.