The China trademark application process involves various misconceptions. For SMEs and startups, gaps in understanding of legal standards, operational details, and risk awareness often result in trademark rejection or infringement disputes. This article examines ten key misconceptions from a practical perspective, provides actionable strategies, and incorporates the latest statistics and cases to help businesses reduce risks and preserve long-term brand value.
Common Trademark Application Myths and Practical Insights
1. Black-and-White Trademarks Offer Greater Flexibility
Many businesses mistakenly believe that color trademarks are more attractive, but black-and-white trademarks offer greater flexibility in legal protection and practical use.
Black-and-white trademarks are not restricted by specific colors during actual use and allow businesses to adjust color schemes according to product or market needs.
If a color trademark changes its colors, a new application may be required, increasing time and costs.
Case: A cosmetics startup registered its trademark in black and white and later adjusted its packaging colors after launch without filing an additional application, saving approximately 20% in brand design costs.
[Data Source: China National Intellectual Property Administration (CNIPA) Annual Report 2023]
2. Business Scope Does Not Limit Trademark Protection
The business scope stated on a business license is not directly related to trademark protection categories.
Trademark classification should be selected based on the nature of goods or services, rather than the company’s registered business scope.
Both individual businesses and limited companies can apply for trademarks across different industries.
Example: A clothing company may successfully register a trademark under the cosmetics category. This demonstrates the flexibility of trademark strategies for future business expansion.
3. Trademark Validity Period and Renewal
A trademark is valid for ten years, and renewal is essential to maintain trademark rights.
Item | Description |
|---|---|
Validity Period | 10 years |
Renewal Application Period | Apply during the 9th year |
Number of Renewals | Unlimited; each renewal extends validity for another 10 years |
Expert Advice: Prepare renewal documents 6–12 months before expiration to avoid trademark invalidation due to missed deadlines.
4. Trademark Class Selection: Quality Over Quantity
Registering trademarks across multiple classes can increase protection coverage, but it also increases costs and potential risks.
Unused trademarks may be subject to cancellation by third parties after three years of non-use.
Businesses should select classes based on current products/services and future business plans.
5. Self-Filing vs. Agent Filing: Similar Processing Time
Many businesses assume that hiring a professional agent can significantly shorten the registration process. However, the timeline mainly depends on the official examination process.
Average trademark registration period: approximately 7 months.
The process may take longer if the application receives a rejection or opposition.
The value of trademark agents lies in providing professional advice and reducing rejection risks, rather than shortening the examination timeline.
6. Unused Trademarks Can Be Activated Through Licensing
Trademarks are intended for use, and licensing unused trademarks can help reduce cancellation risks.
Authorizing others to use the trademark, even free of charge, can help maintain trademark validity.
Licensing can generate economic value while protecting brand reputation.
7. Generic and Descriptive Trademarks Face Registration Challenges
According to Article 11 of the Trademark Law of the People’s Republic of China, signs lacking distinctiveness face higher registration difficulties.
Absolute Grounds for Refusal: Signs involving public interests or prohibited legal elements.
Relative Grounds for Refusal: Some marks may become registrable after acquiring distinctiveness through extensive use.
Special types, such as collective trademarks and certification trademarks, may overcome certain absolute grounds for refusal.
Case: A food company’s trademark “鮮果蜜” was initially rejected. After three years of market use and evidence accumulation, the company successfully obtained registration. [Data Source: CNIPA Rejection Case Database 2022]
8. Similar Trademarks in Different Classes May Be Allowed
The key factor is whether the goods or services are considered similar.
If the classes are not related, similar names may still be registered.
Professional trademark agents can improve registration success rates through detailed class selection and strategic planning.
9. First Character Impact on Word Trademark Examination
During trademark examination, the first character is often an important reference point in similarity comparison.
If trademarks share the same or highly similar first characters and lack overall distinctiveness, they may be considered similar trademarks.
Methods to improve approval chances include creating a distinctive first character or modifying the number of characters (e.g., “茶顏” → “茶顏悅色”).
10. Correct Strategies After Trademark Rejection
Blindly filing an appeal after rejection often has a low success rate. The key strategy is to address the underlying obstacles.
After receiving a rejection, first analyze the reasons, including prior rights, lack of distinctiveness, or likelihood of confusion.
A combination of appeal, non-use cancellation (“three-year non-use cancellation”), or purchasing the conflicting trademark may improve success chances.
Frequently Asked Questions
Q1: Why was my trademark rejected?
Common reasons include similar prior trademarks, lack of distinctiveness, absolute grounds for refusal, and conflicts with prior rights. Professional trademark searches and rejection analysis are recommended.
Q2: Can I register a trademark across multiple classes?
Yes, but businesses should evaluate actual usage needs and costs to avoid cancellation risks caused by non-use.
Q3: How long of non-use can lead to trademark cancellation?
If a trademark has not been used continuously for three years, any third party may apply for cancellation.
Q4: Should I choose a black-and-white trademark or a color trademark?
Black-and-white trademarks provide greater flexibility, while color trademarks require consistent use. Changing colors may require a new application.
Q5: Is trademark appeal mandatory after rejection?
Not necessarily. The rejection reasons should be analyzed first. In some cases, removing prior obstacles or accumulating evidence of use may be more effective than immediately filing an appeal.
Conclusion
Trademark applications are not merely legal procedures; they are an essential part of brand strategy. Businesses are advised to:
Before Application: businesses should conduct professional trademark searches, separate trademark elements for filing where appropriate, and register copyright protection for original graphic designs.
After Application: businesses should regularly update trademark information, maintain evidence of trademark use, and apply for renewal before expiration.
Long-Term Planning: Gradually develop defensive trademark portfolios and reduce risks of brand imitation or trademark squatting.
By implementing these strategies, SMEs and startups can establish competitive advantages in China trademark applications, reduce rejection and infringement risks, preserve brand value, and achieve sustainable growth.