China adopts the first-to-file principle for trademark applications, and anyone can get registration of a trademark without use evidence when applying, which means he may have the trademark rights earlier than the real user of the trademark. Hence, if China is a target market in your business plan, don’t hesitate to register. Millions of applications are born there every year, so that more and more prior application would be a barrier to your application.
Are you swayed to file a trademark application now? No hurry, file an application is never the beginning step, but the most important thing you should do before filing is the trademark search. Millions of applications every year in China, the trademark search will help you detect if you are wasting time.
In most trademark refusal cases, the main grounds for being refused was similar or identical trademarks. The chance of being refused without searching is much higher than the chance of searching. Hence, after conducting a trademark search, you would know whether someone else has already registered or applied to register the same or similar trademark. It can effectively preclude the risk of refusal and significantly increase the success rate of registering trademarks and reduce the business risk during the registration of the trademark.
By searching, you recognize the possibility of getting registered and take action accordingly, which will increase the success rate. If there are some barriers to registering, the applicant has enough time to think of the next step of the brand protection strategy to protect their interest and change the trademark as suggested. It will avoid additional waste of time and money, and reduce the business risks during registration.
How to conduct a trademark search in China?
1. Official trademark database
CNIPA provides an online trademark search database (http://wcjs.sbj.cnipa.gov.cn/) to the public; everyone may use this database for trademark search.
The CNIPA Online trademark database provides SISTM, SGTMI, STMAS and STMG tools to fit the different purposes of searching, and the frequently used tools are SISTM (for similarity search) and SGTMI (search for general TM information).
It is easy to use SGTMI to retrieve trademark information by inputting the application number, but it requests some basic knowledge about the Chinese trademark system to use SISTM.
2. How to use SISTM to search?
In the first step, to use SISTM search, it is necessary to input the international class, trademark and the search mode of the trademark. To capture more accurate search results, it is advised to choose a similar group number of your goods/service items.
The second step is to get an automatic search list from the first step and then screen again to see if there are any same/similar trademarks to yours.
3. How can you tell which mark will obstruct your application?
Generally speaking, there are four types of a trademark may obstruct your application, that is
i. Same trademark in the same subclass;
ii. Similar trademark in the same subclass;
iii. Same trademark in different classes/subclasses which applies to cross-search rules with another class/subclass;
iv. Similar trademark in different classes/subclasses which refers to cross-search rules with another class/subclass.
Different from other countries, CNIPA adopts Nice Classification Table but also have their unique items and rules. They divided each international class into several sub-classes and included some Chinese-specific goods/services in each sub-class. That’s why you are surprised there are so many similar trademarks that can co-exist in one class, but your application is refused.
Hence, to tell out if there is any existed trademark to stop your registration, you may follow the steps to check.
- Checking your goods/service items to find the corresponding sub-class(es), you may contact us to get a bilingual Chinese Classification Table with subclass numbers;
- Inputting your trademark information in the SISTM;
- Clicking search to acquire a full list and then to screen the list yourself;
- Checking if there is the same trademark existed in same subclasses; if no same trademark existed, you might go ahead to the next step, but it may need skills and abandon experiences to judge;
- Comparing with the trademarks in the said list in the aspects of pronunciation, appearance and meaning, it is advised to entrust a local agent to get an evaluation report of your trademark registration.
Follow the rules in this article may help you do the first-round search to exclude some obvious risks. Still, it is never easy to get an accurate result by a fresh because it requests for abandoning experiences on the judgment of trademark similarity and the knowledge about cross-search rules. Hence, if you have to file a trademark application in several classes, it is recommended to entrust a trademark lawyer to do the trademark search first. He may also offer you an alternative solution if the possibility of registration is low.
But if you only want to retrieve the trademark information, you may use the SGTMI tools to find the trademark by the name, application number or the applicant’s name.
Please feel free to contact us via Email email@example.com if you have any questions regarding the trademark search or order a trademark evaluation report before filing an application.