Trademark Protection in China for Foreign Companies: First-to-File and Beyond

1. China’s First-to-File Trademark System

China operates a strict first-to-file trademark registration system. This means that the first party to file a trademark application with the China National Intellectual Property Administration (CNIPA) generally obtains the rights to that mark, regardless of whether someone else had been using the mark in commerce first. This is fundamentally different from common-law jurisdictions such as the United States and the United Kingdom, where prior use can establish rights even without registration.

The implications for foreign companies are significant: if you plan to do business in China — whether by selling products, providing services, or manufacturing — you should register your trademarks before entering the market, not after. Waiting until your business is established in Guangzhou, Shenzhen, or Foshan before filing a trademark application creates a window during which a third party could register your mark and block your ability to use your own brand in China.

The first-to-file principle also means that a trademark registration in your home country provides no automatic protection in China. China is a signatory to the Madrid Protocol, which allows international trademark applications to designate China, but international registration still requires active filing — there is no passive extension of rights.

2. Why Foreign Companies Must Register Trademarks in China

Chinese trademark law provides protection only to registered marks. Unregistered marks receive virtually no legal protection, with very limited exceptions for well-known marks that have achieved a certain level of public recognition within China. Even then, the evidentiary burden on the unregistered mark holder is heavy, and the outcome is uncertain.

A registered Chinese trademark gives the owner the exclusive right to use the mark on the goods and services specified in the registration. It also provides the legal basis to take action against infringers, including filing complaints with the Administration for Market Regulation (AMR), pursuing civil litigation in Chinese courts, and requesting customs authorities to seize counterfeit goods at the border.

For e-commerce businesses, a registered trademark is effectively a requirement for operating on platforms such as Tmall, JD.com, and Pinduoduo, which require proof of trademark ownership as part of merchant onboarding. Companies in Dongguan and Jiangmen that manufacture for export should also consider the customs recordal of their trademarks, which enables proactive seizure of counterfeit exports.

3. The Trademark Registration Process Step by Step

The trademark registration process in China follows a structured sequence administered by the CNIPA. Here is the typical timeline from filing to registration:

Step 1 — Trademark Search and Clearance (1 to 2 weeks): Before filing, a comprehensive search of the CNIPA database should be conducted to identify any prior-filed marks that could block the application. This search should cover not only identical marks but also marks that are phonetically or visually similar, as the CNIPA examines for likelihood of confusion.

Step 2 — Application Filing (1 day): The application is submitted to the CNIPA, either directly or through the Madrid System for international registrations. The application must specify the trademark representation (word mark, device mark, or combined mark), a list of goods and services, and the applicant’s details.

Step 3 — Formal Examination (1 to 2 months): The CNIPA reviews the application for formal completeness. If formal deficiencies are found — such as an unclear trademark image or an incomplete list of goods — the applicant is given an opportunity to correct them within a specified period.

Step 4 — Substantive Examination (6 to 9 months): The CNIPA examiner conducts a substantive review to determine whether the mark meets the requirements for registration, including distinctiveness, legality, and non-conflict with prior registrations. This is the longest and most consequential stage of the process.

Step 5 — Publication and Opposition (3 months): If the mark passes substantive examination, it is published in the CNIPA Trademark Gazette for a three-month opposition period. During this period, any interested party may file an opposition against the registration.

Step 6 — Registration and Certificate Issuance (1 to 2 months after opposition period): If no opposition is filed, or if opposition is resolved in the applicant’s favor, the CNIPA issues the trademark registration certificate. The registration is valid for 10 years from the date of registration and is renewable indefinitely in 10-year increments.

4. Choosing the Right Trademark Classes

China uses the 45-class Nice Classification system for trademark registration. Selecting the correct classes is a strategic decision that directly affects the scope of protection. Registering under too few classes leaves gaps that competitors can exploit; registering under too many increases filing costs without commensurate benefit.

Foreign companies should consider not only the classes that correspond to their core products or services but also related classes that cover ancillary business activities. For example, a clothing brand should register in Class 25 (clothing) but may also want to cover Class 35 (retail services), Class 18 (leather goods), and Class 14 (jewelry) to protect brand extensions and prevent free-riding by unrelated companies.

It is also worth considering defensive registrations in classes that are entirely unrelated to the company’s business if the brand is particularly well-known. This prevents third parties from diluting the brand by registering the same or a similar mark for completely different goods.

5. Opposition, Review, and Appeal Procedures

The Chinese trademark system provides several layers of recourse for both applicants and third parties. If a trademark application is refused by the CNIPA during substantive examination, the applicant may file a review with the Trademark Review and Adjudication Board (TRAB) within 15 days of receiving the refusal notice. The TRAB review process typically takes six to 12 months and results in a decision that can be further appealed to the Beijing Intellectual Property Court.

If a published trademark is opposed by a third party during the three-month opposition period, the CNIPA will review the opposition and issue a decision. Either party dissatisfied with the opposition decision may apply to the TRAB for review. The entire opposition-to-resolution timeline can range from 12 to 24 months, depending on the complexity of the case and the procedural steps taken.

Companies operating in Guangzhou and Shenzhen that need local representation in Beijing-based trademark proceedings should ensure their IP counsel has the capacity to handle CNIPA and court appearances in the capital.

6. Enforcement: What to Do When Your Trademark Is Infringed

When trademark infringement occurs in China, rights holders have several enforcement options, each with its own advantages and limitations:

Administrative Enforcement: Filing a complaint with the local AMR office is often the fastest and most cost-effective route for straightforward infringement cases. The AMR has the authority to investigate, seize infringing goods, impose fines, and order the infringer to cease the infringing activity. Administrative actions typically resolve within three to six months.

Civil Litigation: Filing a lawsuit in a Chinese court allows the rights holder to seek damages, injunctive relief, and destruction of infringing goods. Chinese courts have grown increasingly sophisticated in handling IP cases, and specialized IP courts in major cities have improved both the quality and speed of judicial decisions. Civil litigation generally takes six to 12 months for a first-instance judgment.

Customs Protection: Recording a trademark with China Customs enables border enforcement officers to proactively detain suspected counterfeit goods at ports of entry and exit. This is particularly important for companies that manufacture in China or whose products are frequently counterfeited for export. Customs recordal is an administrative procedure that should be completed immediately upon trademark registration.

Criminal Enforcement: In cases of large-scale counterfeiting, criminal prosecution may be available. Criminal thresholds vary by offense type, and coordination with local Public Security Bureau (PSB) investigators is required. Criminal enforcement is pursued in the most serious cases and carries the strongest deterrent effect.

7. Bad-Faith Filings and How to Combat Them

Bad-faith trademark filings — where a third party registers a foreign company’s trademark in China without authorization — remain a persistent problem despite legislative reforms aimed at curbing the practice. Bad-faith filers typically demand payment from the legitimate brand owner to assign the trademark back, a practice sometimes called trademark squatting.

The 2019 amendment to China’s Trademark Law strengthened the legal tools available to combat bad-faith filings. The CNIPA is now empowered to reject applications filed in bad faith without intent to use the mark, and bad-faith applicants can be subject to administrative penalties. Courts may also award punitive damages in cases of malicious trademark infringement.

Practical steps that foreign companies can take to protect against bad-faith filings include filing trademark applications as early as possible — ideally before any public announcement of China market entry — conducting regular trademark watch services to identify conflicting filings early, and maintaining evidence of prior use and brand recognition that can be deployed in opposition or invalidation proceedings.

If your trademark has already been registered by a bad-faith filer, remedies include filing a trademark invalidation action with the CNIPA, petitioning for cancellation based on non-use (if the registration has been in place for three or more years without genuine commercial use), or negotiating a purchase and assignment of the mark from the bad-faith registrant, though the latter approach rewards wrongful conduct and should be considered only after legal avenues have been exhausted.

8. Trademark and IP Services at Dan Young

Dan Young Business Consultancy has supported over 2,500 trademark registrations for foreign companies entering and operating in the Chinese market. Our IP practice covers trademark availability searches, CNIPA application filing and prosecution, opposition and invalidation proceedings, customs recordal, AMR administrative complaints, and coordination of civil litigation through our network of partner law firms.

We serve clients across Guangzhou, Shenzhen, Foshan, Dongguan, and Jiangmen, providing English-language communication throughout the trademark lifecycle. Whether you need to register your first Chinese trademark, enforce existing rights against an infringer, or recover a mark from a bad-faith filer, our team can guide you through the process.

Contact us at [email protected] or call +86 18565453956 to discuss your trademark and IP needs.