What to Confirm Before Filing a Trademark Application
Author: Junanda ConsultingReviewed by: Junanda Service Team2026-09-19
A trademark application looks like a simple matter of filling in a form, submitting an image and paying a fee. In truth, everything that decides the outcome happens before the application is filed. Whether the name is well chosen, whether the classes cover enough ground, and whether the representation is submitted in the right form all have a direct bearing on the likelihood of registration, the scope of protection, and the ease of enforcing the right later on.
Many businesses pay the fees and obtain a registration certificate, only to discover afterwards that a core class was never filed, that someone else has registered a conflicting mark in an associated class, or that a figurative mark has been rejected because it is similar to another. The preparatory work before filing deserves to be seen through properly.
1. Choosing the Applicant
There are two main types of applicant: a company or an individual.
Filing in the name of a company: the trademark right belongs to the company as an asset and does not move with changes in the individual shareholders, which suits brands that will be operated over the long term and that need financing or external cooperation. The drawback is that when the company is deregistered, the assignment of the trademark has to be arranged in advance, otherwise the mark may be at risk of lapsing.
Filing in the name of an individual: the trademark right belongs to the individual, who can hold it over the long term. Note that filing as a natural person usually requires evidence of business entity status, such as the business licence of an individual industrial and commercial household, and the goods or services applied for should generally relate to the business of that entity. The specific restrictions are subject to the latest rules, and the official requirements should be checked before filing.
On the choice: where the brand is tightly bound up with the company's operations, file in the company's name; where the individual is the core intellectual property and may operate independently in future, filing as an individual may be considered, but the licensing and use arrangements should be planned at the same time.
2. The Mark: Name and Representation
A trademark may be a word, a device, letters, numerals, a colour combination, a sound, or a combination of these elements. There are three common choices:
| Type |
Advantages |
Disadvantages |
Where it fits |
| Word mark |
Easy to say and remember, clear protection, comparatively easy to enforce |
Higher risk of conflict with earlier word marks of others |
Brand names and trade-name style brands |
| Figurative mark |
Strong visual recognition |
Difficult to search, and judgments of similarity are subjective |
Independently designed logos and mascots |
| Combined mark |
A single application covering several elements |
Examined as a whole, and similarity in any one element can affect the whole |
Brands wanting word and device protected together |
A practical recommendation: if the word element is your core asset, file a word mark on its own first, then a figurative or combined mark as needed. Filing them separately is usually better for later enforcement than filing only a combined mark.
3. Nice Classification and the Choice of Goods and Services
Trademarks are divided into 45 classes under the Nice Classification, of which classes 1 to 34 cover goods and classes 35 to 45 cover services. There are three principles for choosing classes:
- Cover your current actual business: file for what you are mainly doing now. This is the basic layer.
- Cover your plans for the next three years: business lines you intend to expand into should be laid out in advance, so that others cannot register them first once you have grown.
- Cover defensive, associated classes: classes that are closely associated with your main business and easily confused with it should be included. A food and beverage business, for example, might consider food, condiments and packaging containers alongside catering services.
One reminder: within each class, specific goods or services must be selected rather than the class as a whole. The names of the items should follow the standard wording accepted by the authorities; names made up at will may not be accepted.
4. Prior Similarity Searches: Method and Channels
A search is the most valuable step before filing, and it can significantly reduce the likelihood of rejection. The recommended process is:
- Initial search: use official channels such as the China Trademark Office website, searching separately by word, pinyin and figurative elements.
- Multi-dimensional search: for the same name, search in simplified Chinese, traditional Chinese, pinyin, English, homophones and common misspellings, as well as longer names containing the same term.
- Cross-class search: search not only the target classes but also associated classes and any classes that might give rise to cross-class protection.
- Status confirmation: distinguish marks that are registered, under application, rejected or invalidated; the status affects the application in different ways.
- Professional review: similarity judgments for figurative and combined marks are subjective, so it is worth reviewing the search results once more before filing.
The search results should be recorded in a brief note stating the date, the channels used, the similar marks found and the reasoning, as the basis for the filing decision.
5. Distinctiveness, Grounds for Refusal, and Filing in Black and White or in Colour
A trademark needs to be distinctive. The following categories are generally difficult to register:
- Generic names, such as "apple" for the fruit itself;
- Descriptive terms that directly indicate the quality, main raw materials, function, use, weight, quantity or other characteristics of the goods;
- Place names: place names of administrative divisions at county level or above, or foreign place names known to the public, generally may not be used as trademarks, unless they have another meaning or form part of a collective or certification mark;
- Other signs lacking distinctive character;
- Conflicts with earlier rights of others, including earlier trademark rights, copyright, rights in a person's name, and enterprise name rights.
A practical recommendation: choose wording that is as original as possible and that does not directly describe the goods themselves. Coined and invented words usually have the strongest distinctiveness and a higher likelihood of registration.
On filing in black and white or in colour, the scope of protection differs.
- Filing in black and white is generally regarded as giving a broader scope of protection; the colours may be varied in use, which gives greater flexibility in practice.
- Filing in colour generally limits protection to the colour combination or colours submitted; changing the colours in use may be regarded as altering the distinctive features of the registered mark.
Unless colour is particularly important, it is generally advisable to file in black and white. If colour is itself a core identifying element of the brand, assess whether to file in colour, or to file the device in black and white together with the specific colour combination as separate marks.
6. Use Evidence, the Application Process and Later Procedures
The life of a trademark lies in its use. It is advisable to keep use evidence systematically from the moment the brand is launched:
- photographs of packaging, labels and instructions bearing the mark;
- advertising materials, online store pages and photographs of physical outlets;
- sales contracts, orders and invoices (invoices showing the name of the goods or services connected with the mark are preferable);
- evidence of trade fair participation, media coverage and awards.
The key point in keeping evidence is that it should demonstrate four elements: time, the entity involved, the mark itself, and the goods or services. It should be filed by year. This matters greatly when responding to an application for cancellation on the ground of three years of non-use, to an opposition, or to an invalidation.
The application broadly runs through the following stages: filing the application — formal examination and acceptance — substantive examination — preliminary examination publication — registration publication — issue of the certificate. The specific examination periods and publication deadlines for each stage are subject to the latest requirements published by the authorities.
Note that during the preliminary examination publication period, an earlier rights holder or an interested party may raise an opposition. Even after registration, the mark may later face invalidation proceedings or cancellation for three consecutive years of non-use. Obtaining the certificate is therefore not the end of the process, but the beginning of maintaining the right.
7. Responding to Rejection, Opposition and Invalidation
- Rejection: on receiving a notice of rejection, a review of the rejection may be requested within the prescribed period, supplementing the explanation of the mark's distinctiveness, its use and its market impact, or initiating cancellation or invalidation proceedings against the cited marks.
- Opposition: where an opposition is filed by another party, a reply should be submitted within the prescribed period, organising the evidence around distinctiveness, lack of similarity and absence of likelihood of confusion.
- Invalidation and cancellation for non-use: in defending such proceedings, the focus should be on preparing use evidence and evidence of the brand's influence.
The time limits for all these procedures are those stated in the official notices, and the deadline should be recorded as soon as a notice is received.
Common Pitfalls
- Pitfall one: filing in a single class and assuming that is enough. Trademark protection works class by class, and a class left uncovered leaves room for someone else to register.
- Pitfall two: filing only a combined mark. Similarity in any one element of a combined mark can affect examination, and it is not helpful for enforcing the elements separately.
- Pitfall three: filing without searching. Similarity is the main reason for rejection, and the cost of a search is far lower than the cost of a rejection.
- Pitfall four: choosing a highly descriptive name. The closer it comes to describing the goods themselves, the weaker the distinctiveness and the harder it is to register.
- Pitfall five: putting the certificate away on a shelf. Long-term non-use may lead to an application for cancellation, so use evidence must be kept continuously.
This article is general business information prepared by Junanda Consulting. Specific policy positions, tax rates, deadlines and procedural requirements are subject to the latest official versions issued by the competent authorities. To understand how these requirements apply to your business, please contact Junanda Consulting for further information and support.
