Trademark Search: Feasibility Evaluation of Your Trademark - China

2016-08-26
BORSAM IP
BORSAM IP  ————————————————

Trademark Search: Feasibility Evaluation of Your Trademark - China
 
This article covers how to conduct a trademark search on the official website of the Trademark Office of China. The applicant can use this system to conduct a preliminary search before starting the filing process. For a more detailed search method please refer to our company website.
 

Brief 

A trademark search(as a pre-procedure of trademark application) is an optional rather than mandatory process. But objectively speaking, a comprehensive and effective search can save time, reduce costs as well as improve the likelihood of success when applying for registration.

To conduct a trademark search people can either choose to do it themselves or can entrust a professional agent. As the CTMO provides an on-line search function, and considering the fact people usually tend to perform an initial search by themselves and amend accordingly before starting a formal registration procedure, we have provided a brief introduction on how to do this.


Steps

The CTMO online database can be used to search for all trademarks registered or currently in the application process in China. It is available in both Chinese and English. Before searching,please note the disclaimer stating that the database may not be 100% accurate, and the search results can only be considered a preliminary search without any legal effect.

When you log in please click “Enter”. You can then see that there are three available searching types - SISTM, SGTMI and STMAS on this page.


SGTMI

The SGTMI database allows you to perform a basic trademark search showing whether any identical or almost identical trademark has already been registered in China. It is a simple search engine. Using this mode, you just need to input one or more pieces of information in fields such as International Classification No., Registration No. orApplication No., Trademark Name or the Name of Registrant (either in Chinese or in English). No field is compulsory, but the more information you provide the better results you will get. Please be advised that there are three possibilities in the drop-down list box - “Begins with”, “Identical", and “Includes”. Select the one that suits your search the best.

You can use the “Begins with” search field for those where the first element is the most distinguishing element, and the other elements are more generic. The “Identical” search field can be used for a specific trademark search with the exact Trademark name or the Applicant. If you want to conduct a complete browse, the “Includes” field may be useful. By using this option, the system may produce all the possible results containing the key elements that you search, including when there is a popular prefix or suffix e.g. -ex, -extra. - Natural. 


Example

Let’s use the “University of Cambridge” whose trademark is one of the famous universities in the world. If we put the term “University of Cambridge” in the “Trademark Name” and set the optional drop down box to “Begins with” or “Includes”, we will obtain the following results:

1. University of Cambridge

2. University of Cambridge 及图

3. 剑桥大学 University of Cambridge

By clicking the first result “University of Cambridge” in the result list, you will see five results showing that the trademark was separately filed in class25, class18, class 14, class 9 and class 3 in the name of “剑桥大学名誉校长和学者委员会”。

Then, by clicking the Second result we will get detailed information concerning the trademark “University of Cambridge” applied in class 18.
The information contained includes the Registration No./Application No., International Classification No., Application Date, Applicant’s name and address in English and/or in Chinese, Trademark Image, List of Goods/Services, Similar Group, Trademark Gazette Publication No., Trademark Gazette Registration No., Publication Date, Registration Date, Agent Name, etc.

The “Trademark Process” field indicates the current stage of the registration process,and this field may include no information or the following in Chinese only.

驳回 = refusal 变更 = modification 

争议 = dispute 领土延伸 = territory extension 

异议 = opposition 续展 = renewal

期满未续展 = no renewal after expiration 驳回复审 = refusal and review 

转让 = transfer


Tips: International Classification of Goods and Services

China has adopted the 10th edition of the International Classification of Goods and Services (Nice Classification) as most EU countries have. China has also further divided the trademarks into subclasses. For example, class 25 subclass 01 covers clothing; class 25 subclass 09 covers socks, and class 25 subclass 10 covers gloves. The full classification with the division classes and sub-classes is available in Chinese only.

However, for the purpose of a simple trademark search, knowing whether the classes are the same is sufficient. 


SISTM

The SISTM database provides an advanced search for identical or similar trademarks, searching for elements including figures and characters. This is recommended because you can adjust your trademark strategy and evaluate more accurately whether your trademark will be granted or not when referring to the search results. The process is similar to the basic SGTMI search, but you must input the International Class No. anda minimum of one other search term. 



Example

Using the example “University of Cambridge”:

1) First input the International Class No. which is 18;

2) Next input the similar classes’ numbers if known;

3) Then select “English letters” in the drop-down box of filed “Search Mode”. Please be noted that the database can search trademarks in Chinese character, Chinese pinyin, English letters, numbers, and acronyms, and by graphic elements. Then by clicking the button “Automatic Search” you will see all the search results.

This search mode will usually generate many records - as indicated above, the search for “University of Cambridge” in class 18 returns 65 records. From this example you may see a number of other universities and companies using “universal” or words that resemble that title, but none of them is similar to the “University of Cambridge”. 

This type of search can highlight whether a trademark that is similar to your own has already been registered. You can determine the level of similarity by yourself before proceeding, reducing the risk of encountering any official actions in the future. 


Tips: How to Judge the Similarity between One Trademark and Another

Firstly, take the goods/services/items into consideration - only when the goods and/or items are similar do we need to conduct a further comparison as to judge whether the trademarks are similar. In principle, goods and items in the same class will be considered “similar” for the reason that the target market as well as sales channels will likely be the same.


The protection for well-known trademark is relatively strict. Despite the fact that a trademark may be similar to a registered trademark, if they are applied on different goods or items they will normally be granted protection. When the registered trademark is a well-known one the situation will be totally different – and it will likely not be granted.

If the goods anditems are similar then we must evaluate the similarities of the trademarks themselves. The following factors should be considered: Word elements, meaning of the marks, pronunciation and the graphic elements.


After Search

If there is no trademark listed in the search results or there is no identical or even similar result to your trademark, you can begin the process of registration before the CTMO as soon as possible. Please be advised that if you do not have a domicile or office in China, a local trademark agent is required. If you are planning to register the trademark in other countries you can extend the registration from China through the Madrid Protocol.

If your trademark is shown in the database, it may mean that your trademark has been registered in “bad-faith” and is now effectively owned in China by someone else. In this case, other remedies may need to be pursued.


If the trademark has just been published following a preliminary examination, then providing you are within the three months of the publication date an opposition application can be filed before the CTMO to prevent a potential bad-faith registration from being granted. If the trademark has already been registered you may also be able to have the registration invalidated by filing a revocation application before the CTMO. Finally, you may also be able to come to an agreement by trading, negotiating or mediating with the trademark owner.

If you need any further professional advice on trademark registration in China please feel free to contact us. You will also find more detailed guidance on the company website.