Trademark Search: Feasibility Evaluation of Your Trademark - China
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This article is concerning how to conduct a trademark search on the official website of trademark office of China, the applicant could use this system to conduct a preliminary search before start the filing. For the particular search method please refer to our company website.
Brief
Trademark search, as a pre-procedure of trademark application, is an optional rather than mandatory process. But objectively speaking, a comprehensive and effective searching work can save time, reduce costs as well as improve the success of getting registered to the most degree.
Normally, to conduct a trademark search, people can either choose to do it by themselves or to entrust a professional agents. As the CTMO provides the service of on-line search, and in considering the fact that people usually tend to proceed with a initial search by themselves and do some amendments accordingly before the starting of a formal registration procedure, hence, we herby would like to mark a brief introduction of how to conduct a trademark search in China for your reference.
Detailed Steps
The CTMO online database can be used to search for all trademarks registered or currently in the application process in China with the available language as both Chinese and English. But before the exact searching, you should accept the disclaimer that as the database may not be 100% up to date, the search results can only be considered as a preliminary search without any legal effect.
When you logging in and by clicking the button “Enter”, you can see there are three available searching types named SISTM, SGTMI and STMAS on this page.
SGTMI
The SGTMI database which allows you to make a basic trademark search to show whether any identical or almost identical trademark has already been registered in China, is a simple search engine. By using this mode, you just need to input one or more information relating to the fields such as International Classification No., Registration No. or Application No., Trademark Name, 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, exactly “Begins with”, “Identical", “Includes”, to select when searching a trademark with the fields as Trademark Name, Name of Registrant either in Chinese or in English.
You can use the “Begins with” search field for those where the first element is the most distinguishing and the other elements are generic while the “Identical” search field can be used for 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 derive all the possible results contain the key elements that you concern with some popular prefix or suffix e.g. -ex, -extra. - Natural.
Example
Let’s take “University of Cambridge”, whose proprietary is one of the famous universities in the world, as an example. 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 the 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 the detailed information concerning the trademark “University of Cambridge” applied in class 18.
Those information may contain 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, 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 adopts the 10th edition of the International Classification of Goods and Services (Nice Classification) as most EU countries do. Whereas, China further divides trademarks into sub-classes. 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 to classes and sub-classes is available here 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 in accordance with such elements as figures and characters. This is recommendation because you can adjust your trademark strategies by evaluating the venture of whether your trademark would be got 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. and 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 may see all the search results.
This search mode will usually generate many records, just 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 resemble words in the titles, but none of them is closely similar with “University of Cambridge”.
However, 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 yourselves before proceeding to reduce the risk of encountering with any possible official actions in the future.
Tips: How to Judge the Similarity between One Trademark and Another
Firstly, we should take the goods/services items into consideration, only when the goods items are similar that we need to conduct a further comparison to judge whether the trademarks are resemble. In principle, goods items in the same class will be considered “similar” for the reason that the target market as well as sales channels will likely to be the same.
But there is an exception: the protection for well-known trademark is relatively strict, despite the fact that a trademark maybe a bit similar with a registered trademark, as they are applied on different goods items, normally, it will get granted of protection while when the registered trademark is a well-known one the situation will be totally different.
If the goods items are similar then we should evaluate the similarities of the trademarks themselves. And the following factors should to be considered: word elements, meaning of the marks, pronunciation and 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, then you can begin the process of registration before CTMO as soon as possible. Please be advised that if you do not have domicile or office in China, a local trademark agent is required.
In case you are planning to register the trademark in other countries you can extend the registration to China through the Madrid Protocol.
On the contrary, if your trademark is unfortunately shown in the database, it may means that your trademark has been registered in “bad-faith” and is now effectively owned in China by someone else. But please do not be upset, there are still some remedies:
1) If the trademark has just being published after preliminary examination, then within three months from the publication date, you can file an opposition application before CTMO to prevent a potential bad-faith registration form being granted.
2) If the trademark has already been registered, you may also be able to have the registration invalidated by filing a revocation application before CTMO with the claims that the said trademark had not been used in a continuous three years. The chance of success will depend on the specific of the case.
3) As the last chance, you may also get the trademark by trading, negotiating or mediating with the trademark owner.
Hope the above is clear for your reference and can be of some use to you. However, if you still want a professional advice on your trademark’s registration in China, please feel free to contact us, you could also find a much more detailed guidance with the screenshot of each step on our company website.
ABOUT THE AUTHOR: Borsam Intellectual Property Law firm
Borsam is a professional I.P. law office, which consists by I.P. attorney, patent attorney and trademark attorney with ten-year experience and cooperates with Taiwan professional patent/trademark attorney. Borsam establish a long cooperation with I.P. firms of more than fifty countries. Our aim is to assist individuals and organizations to maximize the potential of their intellectual property and to minimize the risks faced from exposure to third party rights. We deal with patents, copyright, trademarks and associated issues in China, Hong Kong, Taiwan, USA, Europe and worldwide.
Copyright Borsam IP Law Firm
More information about Borsam IP Law Firm
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
Trademark search, as a pre-procedure of trademark application, is an optional rather than mandatory process. But objectively speaking, a comprehensive and effective searching work can save time, reduce costs as well as improve the success of getting registered to the most degree.
Normally, to conduct a trademark search, people can either choose to do it by themselves or to entrust a professional agents. As the CTMO provides the service of on-line search, and in considering the fact that people usually tend to proceed with a initial search by themselves and do some amendments accordingly before the starting of a formal registration procedure, hence, we herby would like to mark a brief introduction of how to conduct a trademark search in China for your reference.
Detailed Steps
The CTMO online database can be used to search for all trademarks registered or currently in the application process in China with the available language as both Chinese and English. But before the exact searching, you should accept the disclaimer that as the database may not be 100% up to date, the search results can only be considered as a preliminary search without any legal effect.
When you logging in and by clicking the button “Enter”, you can see there are three available searching types named SISTM, SGTMI and STMAS on this page.
SGTMI
The SGTMI database which allows you to make a basic trademark search to show whether any identical or almost identical trademark has already been registered in China, is a simple search engine. By using this mode, you just need to input one or more information relating to the fields such as International Classification No., Registration No. or Application No., Trademark Name, 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, exactly “Begins with”, “Identical", “Includes”, to select when searching a trademark with the fields as Trademark Name, Name of Registrant either in Chinese or in English.
You can use the “Begins with” search field for those where the first element is the most distinguishing and the other elements are generic while the “Identical” search field can be used for 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 derive all the possible results contain the key elements that you concern with some popular prefix or suffix e.g. -ex, -extra. - Natural.
Example
Let’s take “University of Cambridge”, whose proprietary is one of the famous universities in the world, as an example. 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 the 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 the detailed information concerning the trademark “University of Cambridge” applied in class 18.
Those information may contain 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, 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 adopts the 10th edition of the International Classification of Goods and Services (Nice Classification) as most EU countries do. Whereas, China further divides trademarks into sub-classes. 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 to classes and sub-classes is available here 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 in accordance with such elements as figures and characters. This is recommendation because you can adjust your trademark strategies by evaluating the venture of whether your trademark would be got 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. and 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 may see all the search results.
This search mode will usually generate many records, just 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 resemble words in the titles, but none of them is closely similar with “University of Cambridge”.
However, 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 yourselves before proceeding to reduce the risk of encountering with any possible official actions in the future.
Tips: How to Judge the Similarity between One Trademark and Another
Firstly, we should take the goods/services items into consideration, only when the goods items are similar that we need to conduct a further comparison to judge whether the trademarks are resemble. In principle, goods items in the same class will be considered “similar” for the reason that the target market as well as sales channels will likely to be the same.
But there is an exception: the protection for well-known trademark is relatively strict, despite the fact that a trademark maybe a bit similar with a registered trademark, as they are applied on different goods items, normally, it will get granted of protection while when the registered trademark is a well-known one the situation will be totally different.
If the goods items are similar then we should evaluate the similarities of the trademarks themselves. And the following factors should to be considered: word elements, meaning of the marks, pronunciation and 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, then you can begin the process of registration before CTMO as soon as possible. Please be advised that if you do not have domicile or office in China, a local trademark agent is required.
In case you are planning to register the trademark in other countries you can extend the registration to China through the Madrid Protocol.
On the contrary, if your trademark is unfortunately shown in the database, it may means that your trademark has been registered in “bad-faith” and is now effectively owned in China by someone else. But please do not be upset, there are still some remedies:
1) If the trademark has just being published after preliminary examination, then within three months from the publication date, you can file an opposition application before CTMO to prevent a potential bad-faith registration form being granted.
2) If the trademark has already been registered, you may also be able to have the registration invalidated by filing a revocation application before CTMO with the claims that the said trademark had not been used in a continuous three years. The chance of success will depend on the specific of the case.
3) As the last chance, you may also get the trademark by trading, negotiating or mediating with the trademark owner.
Hope the above is clear for your reference and can be of some use to you. However, if you still want a professional advice on your trademark’s registration in China, please feel free to contact us, you could also find a much more detailed guidance with the screenshot of each step on our company website.
ABOUT THE AUTHOR: Borsam Intellectual Property Law firm
Borsam is a professional I.P. law office, which consists by I.P. attorney, patent attorney and trademark attorney with ten-year experience and cooperates with Taiwan professional patent/trademark attorney. Borsam establish a long cooperation with I.P. firms of more than fifty countries. Our aim is to assist individuals and organizations to maximize the potential of their intellectual property and to minimize the risks faced from exposure to third party rights. We deal with patents, copyright, trademarks and associated issues in China, Hong Kong, Taiwan, USA, Europe and worldwide.
Copyright Borsam IP Law Firm
More information about Borsam IP Law Firm
View all articles published by Borsam IP Law Firm
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
