Trademark Registration in China: How the First-to-File System Affects Foreign Brands

First-to-File: The Rule That Surprises Foreign Brands

China operates a first-to-file trademark system. Unlike the United States, where priority is based on first use in commerce, China grants trademark rights to whoever files the application first — regardless of whether they have ever used the mark in trade. This fundamental difference has tripped up countless foreign brands that assumed their established use overseas would protect them in China.

The practical consequence is straightforward and unforgiving: if a foreign company delays filing its trademark in China, a third party can file first and obtain legal ownership. The legitimate brand owner may then face a costly and uncertain legal battle to reclaim the mark, or worse, be forced to rebrand entirely for the Chinese market. This is not a theoretical risk — high-profile cases including New Balance (which paid millions in a trademark dispute over the Chinese transliteration of its name) and Tesla (which had to negotiate to acquire the “Tesla” trademark from a prior registrant in China) illustrate what happens when filing is deferred.

What Can Be Registered as a Trademark in China

China’s Trademark Law permits registration of any sign capable of distinguishing the goods or services of one undertaking from those of another. This includes words, devices (logos), letters, numerals, three-dimensional shapes, color combinations, sounds, and combinations of these elements.

For foreign brands, several strategic considerations merit attention:

Chinese-language marks: A foreign brand’s Latin-character name may be well-known globally, but Chinese consumers will form their own transliterations or descriptive nicknames if the brand does not proactively register a Chinese mark. Registering an official Chinese version — whether phonetic (sounds similar) or semantic (conveys the meaning) — is strongly recommended. Without a registered Chinese mark, the brand has no legal right to stop third parties from using or registering similar-sounding Chinese characters.

Color claims: If a specific color is integral to the brand’s identity, the trademark application should assert a color claim. Without one, the registration protects the mark in any color.

Goods and services classification: China uses the Nice Classification system (45 classes), and applications must specify the goods or services within each class. Overly broad specifications may invite opposition; overly narrow specifications may leave protection gaps. Each class incurs an additional official fee, but under-filing to save costs is a false economy if a gap later proves expensive.

The Trademark Registration Process: Step by Step

The China National Intellectual Property Administration (CNIPA) administers trademark registration. The process proceeds through the following stages:

1. Pre-filing search and clearance: Before filing, a thorough search of the CNIPA database is essential to identify identical or confusingly similar prior marks that could block registration. A search report also informs whether the mark is likely to be rejected on absolute grounds (deceptiveness, descriptiveness, lack of distinctiveness).

2. Application filing: The application is submitted to CNIPA, either directly by the applicant (or its Chinese agent) or through the Madrid System (see below). Foreign applicants without a domicile or real and effective business establishment in China must file through a licensed Chinese trademark agent.

3. Formal examination: CNIPA checks whether the application meets formal requirements — correct classification, complete applicant information, proper power of attorney, clear representation of the mark. Deficiencies result in a notification of amendment, with a deadline for correction.

4. Substantive examination: CNIPA examines the mark for registrability, including distinctiveness, conflict with prior marks, prohibited content (national flags, official symbols, deceptive or immoral matter), and similarity to well-known marks. If grounds for refusal are identified, CNIPA issues a notification of refusal, to which the applicant may respond with arguments or amendments within the specified period.

5. Publication and opposition: If the mark passes substantive examination, it is published in the Trademark Gazette for a three-month opposition period. Any interested party may file an opposition during this window. If opposed, the applicant has an opportunity to respond.

6. Registration and certificate issuance: If no opposition is filed, or if opposition is resolved in the applicant’s favor, CNIPA issues the trademark registration certificate. The registration is valid for ten years from the date of registration and is renewable indefinitely in ten-year increments.

Timeline and Typical Costs

A smooth, unopposed trademark registration in China typically takes 12 to 18 months from filing to certificate issuance. The formal examination phase is usually completed within one to two months. Substantive examination accounts for the bulk of the timeline — typically 6 to 9 months. The opposition period adds a mandatory three months, and the final registration and certificate issuance add another 1 to 2 months.

Official filing fees are modest — approximately RMB 300 per class as of the most recent CNIPA fee schedule. However, foreign applicants who must use a Chinese agent will incur agent service fees, which vary by firm. Additional costs may arise from search reports, responding to office actions, and defending oppositions.

Bad-Faith Filings and Trademark Squatting: How to Protect Yourself

Trademark squatting — the practice of registering a third party’s trademark in bad faith with the intent to sell it back or block market entry — has been a persistent problem in China. The 2019 amendment to the Trademark Law strengthened the legal framework against bad-faith filings by explicitly stating that trademark applications filed in bad faith and not for the purpose of use shall be rejected, and by empowering CNIPA to impose penalties on bad-faith applicants and their agents.

Despite these improvements, foreign brands should adopt a proactive defensive strategy:

• File early: The most effective defense against squatting is being first to file. Ideally, the Chinese trademark application should be filed before the brand is publicly announced, where possible.
• File broadly: Register the brand’s core mark across all classes relevant to current and anticipated business activities. Also consider defensive registrations in adjacent classes where a confusingly similar mark could dilute the brand.
• Register the Chinese transliteration: As noted above, proactive registration of a Chinese version of the mark closes the most common squatting avenue.
• Monitor the register: Regular monitoring of the CNIPA Gazette for potentially conflicting applications enables early opposition, which is far cheaper than post-registration invalidation proceedings.
• Retain evidence of use and reputation: In the event of a dispute, evidence that the mark was in use overseas and enjoyed a reputation before the squatter’s filing can support an opposition or invalidation action grounded in bad faith — though this is a fallback, not a substitute for filing.

Filing Through the Madrid System vs Direct Chinese Filing

Foreign brand owners have two primary routes for securing trademark protection in China: direct national filing with CNIPA through a Chinese agent, or international registration through the Madrid System designating China.

Madrid System advantages: A single application in one language, filed through the home country trademark office, can designate multiple Madrid member countries including China. This reduces administrative complexity for brands seeking protection in multiple jurisdictions simultaneously. Filing fees are centralized. Subsequent management — renewals, assignments, changes of name or address — is also centralized.

Madrid System disadvantages: The Madrid registration is dependent on the home-country basic application or registration for five years (the “central attack” period). If the home-country mark is cancelled or refused during those five years, the international registration — including the Chinese designation — collapses. Madrid designations are also subject to CNIPA’s substantive examination, and the examination often takes longer than direct national filings. Refusals are communicated through WIPO, adding a notification layer that can compress response deadlines.

Direct filing advantages: The Chinese application is independent of any foreign filing — no central attack risk. Direct communication between CNIPA and the Chinese agent can be faster. The scope of protection is defined purely under Chinese law, without the interpretation issues that sometimes arise with Madrid designations.

The choice between Madrid and direct filing depends on the brand’s portfolio strategy, the number of jurisdictions targeted, and the strength and stability of the home-country registration.

Enforcement: What to Do When Someone Infringes

Even with a registered trademark, enforcement is the step that converts a paper right into a commercial reality. China offers multiple enforcement avenues:

• Administrative enforcement: Filing a complaint with the local Administration for Market Regulation (AMR) can result in raids on infringers’ premises, seizure of counterfeit goods, and administrative fines. Administrative enforcement is generally faster and cheaper than litigation, but it does not yield damages for the rights holder.
• Civil litigation: The rights holder may sue for trademark infringement in the people’s courts, seeking injunctions, damages (including statutory damages), and destruction of infringing goods. China has specialized IP courts in several cities, and recent jurisprudence has shown a trend toward higher damages awards.
• Customs recordation: Recording a registered trademark with China Customs enables border enforcement — customs officials can detain suspected counterfeit goods at the border upon the rights holder’s request. Customs recordation is a cost-effective supplement to other enforcement strategies, particularly for brands affected by counterfeit exports.
• Online platform takedowns: Major e-commerce platforms (Alibaba, JD, Pinduoduo) and social media platforms (WeChat, Douyin) have IP complaint mechanisms that rights holders can use to have infringing listings removed.

How Dan Young Business Consultancy Can Help

Dan Young Business Consultancy has managed over 2,500 trademark registrations and IP matters for foreign clients entering the China market. Our trademark services include pre-filing availability searches and clearance analysis, CNIPA application filing and prosecution through our licensed trademark agents, Madrid System designation management, Chinese transliteration strategy, trademark monitoring and opposition, renewal management, and administrative and civil enforcement coordination.

We serve clients across Guangzhou, Shenzhen, Foshan, Dongguan, and Jiangmen, and our team understands the practical realities of trademark registration and enforcement at the local level — not just the black-letter law.

Contact us at [email protected] or call +86 18565453956 to discuss your China trademark strategy.