Although both China and the UK have strong trademark laws, there are significant practical and administrative distinctions between the two countries. Knowing these differences can help Chinese trademark agents and lawyers who deal with UK trademarks provide their clients with better advice. The main areas where trademark practices in the UK and China differ are compared here, encompassing everything from application filing to enforcement.
1. Application Procedure and Filing System
First-to-File Principle:
Getting registered before others is essential because both China and the UK typically use a first-to-file procedure for trademark rights. This practice is severely enforced in China, where the China National Intellectual Property Administration (CNIPA) typically grants rights to the first applicant without giving any thought to previous unregistered usage by others (with the exception of cases involving well-known marks).
In actuality, the UK is also the first to file, but with a twist: a later-filed application may be defeated by an opposition or court action (through the tort of passing off) due to previously unregistered rights (such as earlier use of a mark in the UK that has created goodwill). To put it briefly, Chinese agents should keep pushing their clients to register early in the UK, but they should also be mindful that a local, unregistered company in the UK may still have some clout if they were the first to utilize the mark.
The format of trademark applications differs noticeably between single-class and multi-class applications. Although multi-class filings are technically allowed under China’s system, in practice, it is a single-class system. Chinese applications are normally submitted in classes; one class is covered by the official fee, and additional classes typically call for separate filings or at the very least separate payments equal to those for new applications.
On the other hand, the UKIPO permits multi-class applications, which allow multiple classes of goods and services to be included under a single application number. One class is covered by the UKIPO’s filing fee, and each additional class incurs a little additional expense (currently £50).
The UK method can make portfolio management easier for Chinese practitioners who are accustomed to submitting many applications in China to cover different classes. Though the applicant may decide to divide the application, keep in mind that if one section of a multi-class application is opposed or objected to, it may cause the entire application to be delayed. In the UK, multi-class filing is typically advantageous from a strategic standpoint, while in China, many people prefer to file separately for each class in order to avoid having “all eggs in one basket” and because multi-class filing does not save money.
Classification and Subclasses:
For products and services, both nations employ the Nice Classification system. Its interpretation is where the crucial distinction lies. Each Nice class is further subdivided into several subclasses, and the analysis of similarity is mostly dependent on these subclasses in China’s subclass system. Even though the goods may seem linked to a layperson, the CNIPA may not consider two marks to be in dispute if they belong to distinct subclasses (and those subclasses are not deemed related).
On the other hand, any resemblance between two marks in the same subclass may lead to a dispute or rejection. Like the majority of Western jurisdictions, the UK does not employ subclasses in this manner. Regardless of class number, the question in the UK when evaluating conflicts or similarity of commodities is whether the items or services are comparable in a commercial sense. This means that even if the goods belong to distinct Nice classes, a UK trademark may be rejected (or objected) for being too similar to an existing mark if the public may think them to originate from the same source or if the commodities are actually related.
When conducting searches and offering conflict advice, Chinese agents should widen their horizons by taking into account the true character of the items rather than just class numbers. One advantage of the UK’s absence of subclasses is that you can design specifications with greater freedom because you are not constrained by a strict list of items for each subclass (although it is still desirable to use standard words for clarity).
Power of Examiner to Refuse for Prior Rights:
As part of the substantive examination on related grounds, the Trademark Office examiner in China has the authority to proactively reject an application if it conflicts with an already-registered mark. However, a UKIPO examiner won’t flatly reject an application due to an existing trademark. After doing a search, the UK examiner not only notifies the owners of any previously comparable marks, but also notifies the applicant of any such marks.
The UK system leaves it up to the market; if the owner of the earlier trademark feels that the new application infringes on their rights, they have the responsibility to oppose it. This is in contrast to China’s CNIPA inspection, which will mention prior marks and might reject an application for conflict.
In the UK, if the previous owner does not formally object within the allotted time, the application can still be registered even when the applicant has been alerted about comparable prior marks. Because of this strategy, trademark owners must keep a close eye on incoming applications and be prepared to object if needed. Since the UKIPO won’t automatically prohibit potentially conflicting filings by others, Chinese enterprises should set up a watching strategy for the UK (either directly or through an attorney service) to identify such submissions. As opposed to fighting an opposition, applicants can save time and money by amending or withdrawing their mark when filing their own mark if an objection or opposition appears likely.
Speed to Registration:
For simple cases, the UK procedure is usually quicker. If there are no objections or oppositions, a UK trademark can frequently be registered in 4 months, whereas even the most straightforward applications in China take 9–12 months. Simpler processes and fewer applications than in China are two factors contributing to the UK’s quicker timetable. Chinese agents should prepare appropriately because the UK may provide a UK registration certificate far faster than a Chinese one if a client requires it for investor due diligence or, for example, an Amazon brand registry. Conversely, UK brand owners entering China must file early and anticipate a lengthier wait time due to the slower Chinese process.
Local Representation and Address Requirements:
It is strictly required that overseas applicants file in China through a licenced Chinese trademark agent. While hiring a UK trademark lawyer is not absolutely necessary for international applicants to file in the UK, they still require a UK address for service. The majority of foreign businesses actually designate a UK company or agent to handle their application, which fulfils the address requirement and offers direction.
Similar to how UK firms collaborate with Chinese agents for CNIPA files, Chinese agents who lack the necessary qualifications in the UK should file with UK firms. Another justification for hiring local counsel is the language barrier, as all correspondence with the UKIPO will be in English. In contrast, applications and correspondence in China must be in Chinese, requiring applicants who do not speak the language to have local knowledge.
2. Analysis, Rebuttal, and Appeal
Absolute Grounds:
Applications are reviewed for inherent registrability (descriptiveness, distinctiveness, etc.) in both jurisdictions. The ideas are similar (for example, generic names and merely descriptive phrases are rejected in both China and the UK). China’s law specifically forbids some items, such as names of state entities or flags. Notably, China also forbids marks that are politically or morally sensitive, something the UK does to some degree under public policy or similar grounds, but the cultural context is different. With a few exceptions (for instance, a phrase may be considered descriptive in English but not in Chinese, or vice versa), a mark that passes muster in one country on inherent grounds is typically acceptable in the other.
Opposition Procedures:
In China, an application is published for a three-month opposition period following preliminary approval. Although anyone can submit an opposition, in reality, it’s typically a rival or an interested party. The publication time in the UK is two months, though it can be extended to three months if a possible opponent requests it. In both nations, the mark’s registration is halted while the opposition is being considered. Important distinctions:
Grounds for resistance:
Similar to the grounds for denial, China’s resistance may be based on descriptiveness, the fame of an unregistered mark under specific circumstances, existing previous marks, and new bad-faith rules. The United Kingdom permits oppositions on any of the grounds for denial, including absolute grounds like descriptiveness or bad faith and relative grounds like prior trademark rights or passing off.
One significant distinction is that in the UK, “bad faith” is a specific ground that can be used in opposition or subsequent invalidation if someone filed a mark with no intention of using it or to unfairly block someone else. Although bad-faith submissions are now also targeted by Chinese law (the 2019 amendment added language requiring intent to use and enabling rejection of bad-faith applications with no intent to use), it can be difficult to prove ill faith in China unless the offence is extremely severe.
Process:
The CNIPA (Trademark Office/Review Board) in China uses a primarily paper-based procedure to decide an opposition. After the parties present their arguments and supporting documentation (in Chinese), a verdict is ultimately made. The opponent may submit a separate invalidation against the mark, which will be heard by CNIPA’s Trademark Adjudication Board before going to court, but they will not be able to appeal the opposition judgment if they lose (the mark will register). The applicant may appeal the decision to the Trademark Adjudication Board and then the court if they lose (that is, if their application is denied in the opposition). As a result, opposition conflicts in China may go through these phases for years.
The UKIPO’s Tribunal handles opposition cases in the UK. Though often less formal than a full court case, it is an adversarial proceeding. After both parties submit pleadings (a notice of objection and a defence), there is a period for evidence (for example, if the opponent’s mark is older than five years, they may need to provide proof of usage), and both parties may submit witness statements or supporting documentation.
Parties may ask for an oral hearing before a UKIPO hearing officer, but the matter is typically resolved on the written record. Either party may file an appeal with the High Court or an independent Appointed Person (an IP specialist who considers the case) following the UKIPO’s ruling. Although the Appointed Person approach is speedier and less expensive, it comes with the disclaimer that the decision made there is final and cannot be challenged again. It resembles a court matter more if it is appealed to the High Court. Depending on complexity, a UK opposition (without appeal) typically takes 6–18 months, which is a little less time than Chinese opposition-plus-appeal sequences.
Costs:
In the UK, a costs order against the losing party after an opposition may be made (to partially refund the winner’s expenses, based on a scale). In China, legal fees are not recoverable during the administrative opposition stage, and each party usually pays for its own expenses regardless of the result. This indicates that submitting baseless oppositions is financially discouraged in the UK.
Chinese agents should be aware that evidence is required in UK oppositions. For instance, if an opponent’s mark is more than five years old, they must demonstrate that it has been used in the UK; otherwise, the opposition may be defeated based only on that. Use of the previous mark is typically not investigated during opposition in China’s system (in China, non-use can only be brought up through separate cancellation procedures, not as a direct defence in an opposition). Therefore, if the opponent hasn’t been utilizing their mark, the UK system gives applicants a small “out.” This relates once more to how crucial it is to use marks in business.
The applicant may request a hearing with a senior examiner to present their argument, or they may submit a written appeal following an initial rejection, if the UKIPO rejects an application on absolute grounds (for example, that it is descriptive) and the applicant disagrees. In China, the applicant must file a review with the CNIPA’s Trademark Review and Adjudication Board and, if unsuccessful, appeal to the court (typically the Beijing IP Court) if the examiner (Trademark Office) rejects their application for any reason.
Although there are ways to challenge rejections under both systems, the procedures and forums are different. The UK permits a quicker internal review, which occasionally permits changes or overturns decisions. Chinese processes are more formal and multi-layered.
3. Maintenance and Requirements for Trademark Use
Use It or Lose It (Non-use Cancellation):
The period of time that non-use is susceptible to cancellation is one of the most significant distinctions. Anybody can request the cancellation of a trademark that has been registered in China for three years or more if the owner is unable to provide proof that the trademark has been used in China during the previous three years. In the UK, a mark is susceptible to a revocation action for non-use after five years of non-use following registration.
Therefore, trademark owners in the UK have a little more leeway to begin utilizing their mark in business. Chinese brand owners may potentially have up to five years to launch their products in the UK if they obtain a UK trademark but are not yet prepared to do so (the clock starts from the date of completion of the registration process). However, in order to increase goodwill and enforceability, it is always best to use the mark sooner rather than later.
What Qualifies as Use:
Both jurisdictions demand that the mark be used on the products or services in question in a “genuine” or “real” manner. Some distinctions include the requirement that a mark be used for public, commercial purposes in China (interestingly, usage on Chinese-exported goods can also be considered use in China). In the UK, usage must take place in the UK (although, in some circumstances, use in exports may count as UK use).
With EU-wide marks, use anywhere in the EU used to count for UK use prior to Brexit, but UK national marks need UK use. Another distinction is that in China, in the event of a challenge, the owner must demonstrate use in the registered mark’s identical form or in a suitable variation that preserves its distinctiveness. The UK is a little more lenient when it comes to variations; if the unique element is kept the same, using a slightly altered version of the mark may still qualify as using the registered mark (this is similar in concept to China, although interpretation can differ).
If a non-use attack is brought, the trademark owner in both nations bears the burden of proving use. The type of evidence required in the UK environment (sales invoices, marketing materials, web screenshots, etc.) should be explained to customers by Chinese agents. Notably, UK procedures will require evidence in English (or with translations).
Maintenance and Renewal:
Trademark registrations must be renewed every ten years in both China and the UK. While addressed with the appropriate offices, the process is simple in both locations. One small distinction is that, whereas the UK permits renewals within six months prior to expiration, with a six-month grace period following (with a late cost), China permits renewal applications within twelve months prior to expiration (with a six-month grace period following, with a surcharge).
This is typically not a problem as long as renewals are completed on schedule. When a renewal is due, the UKIPO will send a reminder to the address for service, whereas CNIPA may or may not send reminders directly (usually, agents handle it). This is why it’s crucial to docket the deadlines individually for each jurisdiction.
Differences in Assignment and Licencing:
Trademarks may be assigned (transferred) and licenced in both nations. To prevent confusion, the authorities in China may require that related marks be given simultaneously when issuing a mark if it is for a generic name or very similar to other marks you possess. This is because Chinese law forbids partial assignments that could mislead customers. In the UK, trademark owners are able to assign any single mark on their own; there is no such need.
Regarding licencing, China mandates that trademark licence agreements be recorded with CNIPA in order for them to be enforceable against third parties; failing to do so may impact some legal remedies but does not nullify the licence between the parties in and of itself. Although it provides a way to record licensees, the UK does not mandate that licences be registered at the UKIPO. In the UK, the primary purpose of recording a licence is to alert others, and in certain situations, a registered licensee may participate in enforcement actions.
However, non-recordal does not render the usage or licence void. Another nuance: UK law does not have a statutory requirement that the licensor oversee the quality of the licensee’s goods (to prevent the mark from being applied to subpar goods, etc.), although a naked licence may eventually detract from the mark’s distinctiveness. This is in contrast to Chinese trademark law, which expressly states that the licensor must oversee the quality of the licensee’s goods.
Because of these distinctions, Chinese practitioners should modify the way they record and manage trademark transactions for UK marks. For example, a UK licence may contain comprehensive quality control clauses primarily for commercial purposes rather than legal requirements, whereas a Chinese licence may do so in part for legal reasons.
4. Enforcement and Violations
Civil lawsuits in People’s Courts, administrative enforcement (by local Administrations for Market Regulation, which can conduct raids and impose fines), and criminal prosecution for serious counterfeiting (which typically requires a high threshold of sales/value) are the various avenues through which trademark enforcement can be pursued in China. In the UK, civil litigation in the courts is the main method of enforcement. Apart from commercial rules that address criminal-scale counterfeiting, there is no general administrative authority comparable to China’s AMR that a trademark owner can easily file a complaint against for routine violation.
However, when it comes to counterfeit instances, the UK does have considerable backing from border officials (Customs) and Trading Standards. Local government entities known as Trading Standards have the authority to confiscate counterfeit goods and bring criminal charges against vendors. This is very similar to what China would do, for example, in terms of public action against street marketplaces that sell counterfeit goods. However, the UK brand owner must take the effort to send cease and desist letters and, if necessary, launch a lawsuit in non-counterfeit trademark disputes (for example, a competitor using a similar mark when it’s more of a civil confusion issue).
Litigation procedure:
Chinese agents should be informed that, in contrast to Chinese civil IP actions, which mostly rely on supplied documents and have limited discovery, UK civil litigation is an adversarial procedure with disclosure (discovery) responsibilities, cross-examination of witnesses, etc.
The Intellectual Property Enterprise Court (IPEC) in the UK is intended to simplify IP disputes and cap costs, making it accessible to SMEs and international enterprises that might otherwise be put off by the high expense of litigation. However, UK processes can be more costly. Although most trademark lawsuits don’t involve damages that high, IPEC caps recoverable legal fees at £50,000 for the final trial stage and £500,000 for damages. In contrast, litigation costs (also known as lawyer fees) are not entirely recoverable in China; even if you prevail, you may only receive a little sum for your legal expenditures.
Unless you can provide proof of actual losses or profits, damages in China are subject to statutory caps. Although these caps have been raised in recent years (up to RMB 5 million in recent years, and higher in drafts), they typically result in smaller awards than what might be seen in a UK case with a significant commercial impact. The UK may grant damages based on actual lost earnings, unjust enrichment (account of defendant’s gains), or even extra damages for flagrancy once infringement is proven. A hard cap does not exist.
Preliminary Measures:
To swiftly halt infringement, both nations permit preliminary injunctions (known as “behaviour preservation” orders in China and interim injunctions in the UK), although they are only occasionally issued. If the trademark owner presents a compelling argument, the balance of convenience supports the injunction, and failure to stop use immediately would result in irreversible harm that damages subsequently cannot fully compensate for, UK courts would normally award an interim injunction.
Though they are still rare in trademark disputes outside of outright counterfeits or really urgent cases, Chinese courts have recently grown more amenable to pre-trial injunctions in IP issues (particularly in circumstances of clear-cut counterfeiting or where evidence might be destroyed). In the UK, you have choices like search orders in extreme cases to preserve evidence, but again, they are for extraordinary circumstances. In China, another tool is the evidence preservation order, which is comparable to having a court notarize a purchase of infringing products or confiscate evidence.
Border Control and Counterfeiting:
As mentioned, if a trademark is registered with the General Administration of Customs, China’s customs authorities have the authority to stop counterfeit exports. Similar to this, the UK (post-Brexit) has its own mechanism for customs seizures. To have the Border Force keep an eye out for fake shipments, trademark owners must submit an Application for Action to UK HMRC.
One distinction is that the UK Border Force focuses on imports (although they can also intercept items in route), but Chinese Customs has been highly aggressive in capturing exports of fake products from Chinese ports. In order to cover both ends of the supply chain, Chinese businesses who deal with counterfeit concerns should register their marks with both Chinese and UK customs.
Market Environment and Culture:
It’s important to note that China has a far greater rate of trademark squatting than the UK, which is the practice of registering a trademark in bad faith by someone who has no legal interest. Although there have been instances of opportunistic filings in the UK, the problem is far less widespread than it is in China.
Additionally, the UK has legal measures (passing off, bad faith) that discourage squatters. For instance, the legitimate owner may contest or reject an application made in the UK for a well-known Chinese brand on the basis of bad faith if the applicant had no intention of using it. Foreign brands have typically had a difficult time in China unless they were extremely well-known and could demonstrate that the squatter “knew or should have known” about the brand.
To prevent even sporadic bad-faith applications, Chinese companies who are growing internationally should nonetheless proactively register their trademarks in the UK (and other nations) before to launch. However, the UK system will give them a fair chance to regain their mark if they do come across one.
Use of Trademarks in Various Languages:
Chinese businesses frequently have a brand in Chinese characters along with a transliteration or distinct English name. Protecting a foreign brand’s Chinese equivalent is essential in China (many well-known Western brands discovered this the hard way). A Chinese corporation should register that form of the mark in the UK if it intends to market under a brand name in Chinese characters (for instance, to target the Chinese-speaking community in the UK).
Since the typical UK customer cannot read Chinese characters, the UKIPO views them as figurative marks, similar to a logo. Translations of foreign characters are not protected in any way unless they are registered. Nonetheless, the majority of Chinese businesses that join the UK market do so using an international name (often the pinyin) or an English brand name.
The important thing is to safeguard your brand in both jurisdictions by taking into account all of its variations. Although the idea of “well-known brands” is present in both nations, its application varies. A well-known trademark in China might be useful in resolving conflicts involving different products or against squatting. In the UK, a mark’s reputation—which isn’t always a formal declaration of well-known status by an authority—can provide more protection. For instance, well-known brands are protected from dilution. However, a Chinese brand that is well-known in China won’t necessarily be seen as well-known in the UK unless it has been exposed there.
5. Useful Advice for Chinese Professionals
The following are some useful lessons learned while handling trademarks between the UK and China:
Actively File in Every Jurisdiction:
In the UK, registration in China does not grant any rights, and vice versa. As a result of increased awareness, several Chinese businesses are now included among the leading foreign filers in the UK. Make sure your customers obtain their UK trademark rights as soon as possible, preferably prior to any trade exhibitions or public launches.
Adjust Your Approach to the System:
Don’t assume that the Chinese method will be successful in the UK. In the UK, for instance, excessively broad specifications that could be tried in China (to deter squatters) could be contested as being too ambiguous or in bad faith (UKIPO, influenced by decisions like SKY v SkyKick, may query extremely broad filings with no obvious business purpose). Clearly and realistically draft the UK specifications. On the other hand, while helping UK companies in China, don’t forget to cover all pertinent subclasses and maybe file defensive marks (including versions in Chinese) to ward off squatters.
Monitor and Defend:
Establish monitor services for UK trade mark gazette publications since the UK depends on owners to police their marks. The best defence against conflict is frequently prompt opposition. Even if the CNIPA may reject a lot of conflicts in China, a watch is still necessary because of the large number of applications and the potential for applications submitted in bad faith to be accepted.
Collect Proof of Use:
To help prevent non-use cancellations and support enforcement, clients should be encouraged to maintain thorough records of their trademark use in each market. For example, in China, you may need to provide proof of use in the face of a three-year cancellation; in the UK, you may need to do so in an opposition or when enforcing rights to demonstrate reputation.
Use Legal Tools for Bad Faith:
Although it’s still a fight, new revisions in China are potentially making it easier to stop bad-faith filings. In the UK, if someone has stolen your client’s trademark, don’t be afraid to employ the passing-off or bad-faith defence. The law is on your side to invalidate such squatters, since the UKIPO and courts view trademark piracy negatively.
Recognise Cultural and Legal Variations:
Certain trademark terms or symbols may be appropriate in one nation but not in another (for instance, some emblems or words may cause sensitivities). Verify that transliterations or translations don’t convey unforeseen meanings. Legally speaking, be mindful of things like the UK’s more stringent regulations regarding the use of the ® sign; in the UK, it is unlawful to mark a product as “registered” if it is not, but in China, the same is true but enforcement is less obvious. Before using the ® symbol, advise clients who are expanding to the UK to use ™ until their mark is registered.
Key Takeaways for the Comparative Analysis of Trademark Practices in the UK and China
Obtaining exclusive rights to a brand is the ultimate objective of trademark protection in both China and the UK, but the means to do this and the tactics used to defend those rights vary. When dealing with UK trademarks, Chinese agents should modify their strategy: anticipate a different assessment procedure, be ready for the potential for legal opposition procedures, and modify maintenance and enforcement strategies to conform to the UK system.
You may assist Chinese brand owners in navigating the UK trademark system more skillfully and steer clear of typical problems that arise from presuming the two systems are the same by being aware of these distinctions. It’s important to be educated because both jurisdictions are always changing (take China’s ongoing legislative reforms and the UK’s post-Brexit adjustments, for example). Trademark experts from China and the UK can collaborate to safeguard brands globally if they have the necessary expertise.
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