At What Stage Should You Prepare Trademarks and Patents?
Author: Junanda ConsultingReviewed by: Junanda Service Team2026-09-19
Intellectual property is not something to be caught up on once the company has grown; the earlier it is dealt with, the lower the cost and the smaller the risk. The core risk for a trade mark is that someone else registers it first. The core risk for a patent is that premature disclosure destroys novelty. Both risks have the same remedy: file early. This article sets out the timing, the choice of classes and the ongoing maintenance, so that the decisions can be made before the risks crystallise.
Trade marks: search and file as soon as the name is finalised
Many founders assume that a business licence is needed before a trade mark can be applied for. That is not the case. A trade mark application may be filed by a natural person, a legal person or another organisation, and it is common practice either to apply in the name of the company to be established or for a founder to apply first. What matters is not waiting for the licence, but starting the search the moment the name and logo are finalised.
- The first-to-file principle. Trade mark registration in China follows the first-to-file principle. Where two identical or similar applications are made in the same class, the party that files first will, in the ordinary course, obtain the earlier right. Filing one day later may mean facing refusal, opposition, or the cost of buying the mark back.
- Term and renewal. A registered trade mark is generally valid for ten years from the date on which registration is approved, and may be renewed on expiry. Renewal is subject to a deadline, and failure to renew in time puts the right at risk of lapsing.
- Search first. A similarity search should be carried out before filing, to assess whether identical or similar earlier marks exist in the target classes, and to avoid an application that is refused after a blind filing.
- Protect each element separately. A word mark, a figurative logo and a composite mark each have a different scope of protection. Word marks are generally more stable, while figurative or composite marks are more distinctive but more subjective to assess for similarity. Where funds allow, they can be applied for separately or in stages.
It should be noted that a trade mark passes through formal examination, substantive examination and preliminary publication before registration is approved. The overall timetable is not fixed, and corrections, refusals or oppositions may arise along the way. Allowing sufficient time before a brand launch is therefore more prudent than filing at the last possible moment.
Class selection: core classes plus defensive classes
Trade marks are divided into 45 classes under the Nice Classification, comprising goods in classes 1 to 34 and services in classes 35 to 45. Protection is granted by class. The general logic of selection is that the core classes must be covered, while defensive classes are covered where the circumstances justify it.
| Class |
Direction |
Typical use |
| Class 9 |
Scientific instruments, software |
Computer software, apps, downloadable programs |
| Class 35 |
Advertising and sales |
E-commerce platforms, advertising and promotion, business management, retail services |
| Class 42 |
Technical services |
Software development, technical consultancy, SaaS services |
| Class 38 |
Communication services |
Instant messaging, information transmission services |
| Class 41 |
Education and entertainment |
Online courses, training, content platforms |
Actual selection should combine the main business with the lines the business may extend into. Omitting a core class hands the most valuable use of the brand to someone else, while a defensive registration left unused for a long period may itself be exposed to revocation. The balance between occupying space and the cost of maintaining it therefore has to be weighed.
A simple three-step method helps. First, list the goods or services actually provided now, and map them to the relevant classes and sub-groups. Second, list the business lines that may be added within the next two or three years, and assess whether they need to be reserved. Third, for classes that are closely related to the brand and where a third-party registration would create a real obstacle, add a defensive filing as appropriate. The more specific the list, the less likely a class is to be missed.
Patents: file as soon as the technical solution takes shape
The key difference between patents and trade marks is that a patent requires novelty, and disclosure in advance may destroy the possibility of grant altogether.
- File before disclosing. Paper publications, trade fair displays, crowdfunding pages and technical details disclosed at public presentations may all constitute prior art. The application is best completed before any external disclosure takes place.
- The three types differ:
| Type |
What it protects |
Typical application |
| Invention patent |
A new technical solution for a product, a process or an improvement to either |
Core solutions with high technical content and a long life cycle |
| Utility model |
The shape or structure of a product, or a combination of the two |
Structural improvements, with a comparatively shorter examination period |
| Design patent |
The shape, pattern or colour of a product, or a combination of these |
External appearance, UI visual design and similar |
- Filing strategy. Core technology is best protected by invention patents, structural improvements can be covered quickly by utility models, and product appearance and interfaces can be filled in by design patents, forming a combined portfolio.
When to register software copyright
Copyright in software arises from the moment the software is completed, and registration is voluntary, but a registration certificate has a wide range of uses in applying for qualifications, bidding for tenders and proving ownership in a dispute. Registration is best completed before the version is finalised for release or before a project application is made, and materials such as the first and last pages of the source code and the accompanying documentation should be kept.
In terms of the order of operations, it is worth aligning the version registered with the version about to be released. If there has been a substantial revision after registration, involving major functional changes, re-registration or an application for the new version can be considered, so that the materials submitted do not become divorced from the actual product. Source code, design documents and version commit records are themselves evidence of ownership, and should be kept in an orderly way in a code repository under the company's control rather than scattered across individual devices.
Choosing between trade secrets and patents
Not every technology is suited to a patent application. Whether to exchange disclosure for protection can be judged on three points:
- Is the technology easy to reverse engineer or to expose through a competitor's product? Where it is readily identifiable, patent protection is the better fit.
- Does the technology depend more on process parameters, formulation know-how and similar accumulations that are hard to detect? Such technology is better held as a trade secret.
- Where the trade secret route is chosen, confidentiality policies, access controls and confidentiality agreements must accompany it. Once a secret is disclosed without them, there is neither a patent nor a secret left.
Annual maintenance and monitoring
- Payments. Trade mark renewals and patent annuities are subject to deadlines, and late payment may give rise to surcharges or even termination of the right. A register should be maintained with a named person responsible for tracking it.
- Monitoring. Carry out a regular similarity watch in the core classes, and oppose similar marks promptly when they appear in preliminary publication.
- Responding to oppositions and invalidations. Where an opposition, a declaration of invalidity or a revocation notice for non-use is received, the response must be filed within the prescribed period, so that the right is not treated as abandoned through delay.
Common Pitfalls
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.
