Contrary to what many people may think, China has made substantial progress in the last few years as far as intellectual property rights protection is concerned. As a matter of fact, major changes to China’s Trademark Law became effective on May 1, 2014, including a number of international practices like the filing of multi-class trademark applications and the registration of sound trademarks. Deadlines were also set to avoid administrative inaction, and measures and sanctions against trademark infringers were made more severe.

In China, trademarks must be registered in order for their owners to enjoy the exclusivity rights associated therewith. To protect trademark rights, China abides by the “first-to-file” principle. Therefore, protection lies with the first person to file an application for trademark registration. As a result, the owner of a trademark in another country is not entitled to enforce its protection rights in China.

The procedure for the registration of trademarks begins with the filing of a registration application with the Trademark Office, which evaluates whether or not the application is admissible. If not objected, the Trademark Office orders its publication in the official gazette. Once the registration application has been published, interested parties can file an objection against it within three months. If no objection is filed, then registration is granted. The problem is that the process takes too long, approximately three years counted as from the date of filing of the application.

In China, trademark protection does not cover an entire class. It is necessary to file a detailed list of products or services to be protected within each class. In principle, China’s Trademark Office accepts the products listed in the Nice Classification, although it has and uses its own classification criteria.

Concerning products to be sold or services to be provided in China, it is worth highlighting that trademark applicants must necessarily create a Chinese equivalent of the trademark. Thus, it is necessary to find the Chinese equivalent of the original trademark, either a semantic or a phonetic translation, even though it has no meaning whatsoever for Chinese consumers. However, to enter the Chinese market it is advisable to retain the services of companies specializing in trademark development and management.

For example, we should bear in mind that in China number four (Sì) is considered an unlucky number because it is pronounced the same as death in Mandarin (Sǐ); consequently, we should avoid including it in similar trademarks or sounds. On the contrary, number 8 (Bā) is considered a lucky number so it might be appropriate to include it in a brand to guarantee the success of the product.

It should be pointed out that China’s intellectual property right protection system is different from and independent of those in force in Hong Kong, Macao, and Taiwan. Consequently, in addition to the registration applications filed in mainland China, it is necessary to file applications seeking protection in these regions.

To supplement the protection circle, China has been implementing since late 2005 a trademark, copyright and patent registration procedure for Customs purposes. Registration is voluntary and independent, although advisable, in order to protect these rights in international trafficking in goods.

If a trademark has been registered with the General Customs Bureau, then Customs authorities will automatically investigate and control the legitimacy of imported or exported goods. Customs will control the import or export of products and will contact the intellectual property rights holder if it detects any shipment containing identical trademarks, copyrights or patented technology.

The holder of intellectual property rights can thus save money in litigation, as it will not be necessary to take the case to court because Chinese Customs will be in charge of conducting an investigation and determining whether or not the relevant goods are to be withheld.