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Prosecution Strategies and Trademark Registration in China
date: 2018-09-04

To clients seriously considering developing a successful business in China, trademark registration in China should be one of the first steps to complete. Trademark prosecution in China can be tricky, from selecting a Chinese character equivalent of your mark to various issues it can run into, which will be pointed out through an Office Action. Grounds for refusal are plentiful and registrants must be aware of them to avoid extending the process of the trademark registration in China.

Trademark registration in China is a time-sensitive issue – China adheres to a “first-to-file” principle, so the faster you register your trademark, the more likely you are to prevent registration by a bad faith actor. Furthermore, selecting an appropriate Chinese character equivalent for your mark is essential to your success in popularization of your product as well as in the future protection of your mark – as Chinese is a language of homophones, various characters can represent the same sounds, which can in turn pose an issue when fighting an infringing product.

After trademark registration in China is filed, the official channels review the application and may issue an Office Action requesting to amend certain goods or services in the specifications. Amending the points as requested by the TMO is suggested, although items can also be re-worded or explained further. To pass this stage swiftly and succeed in your trademark registration in China, however, we suggest amending the specifications as requested.

Once the formality of a trademark application is completed, it will move into the substantial examination stage, which may lead to one of the three results, i.e. 1) preliminarily approved and published in the Official Gazette, 2) rejected based on absolute and/or relative grounds, and 3) partially approved and partially rejected.

There are many skills and strategies to be implemented in order to obtain trademark registration in China smoothly and with broad scope of protection. As in many other countries, filing the trademark application as early as possible is always recommended.