German Company Trademark Registration and Appeal in China

For foreign companies registering trademarks in China, the document threshold is not high, but the response to a refusal is where professional skill is truly tested: use EU and German prior marks, argue similarity, distinctiveness, and market differentiation for the specific goods classes, and file the office action appeal within the statutory period. This article follows the anonymized project of a German company applying for the holux and Deutschtec trademarks in China.

1. Project Background

Deutschtec GmbH, a German company mainly producing doors and door drive systems, decided to enter the Chinese market and engaged Chinese lawyers to handle trademark registration and office action appeals.

Scope: the holux mark in Class 8 (word) plus one device mark; the Deutschtec word and device marks in a total of 6 classes. After some classes were refused, office action appeals were filed for 4 trademarks.

2. Project Difficulties

1. Strict power of attorney requirements: the power of attorney had to be printed, signed, and sealed with nationality and Chinese address fully stated; handwritten forms were not accepted;
2. Goods class selection: each class allows up to 10 goods/services, and poor selection limits protection;
3. Refusal response: an appeal had to be filed within the statutory period after refusal;
4. Prior mark evidence: EU and German trademarks had to be used to establish prior rights;
5. Cross-border communication: because the client was abroad, the engagement was finalized with a scanned sealed contract plus law firm filing and an explanatory note.

3. Case Process

Step 1: Materials and filing

1. Prepared the translated business license, trademark agency power of attorney, trademark drawings (JPG), and company information;
2. Signed the non-litigation engagement agreement with a fee structure of number of classes times unit price plus additional charges for excess items;
3. Selected goods/services by class and filed the registration applications.

Step 2: Response to refusal notices

1. After receiving the refusal notice from the China National Intellectual Property Administration, reviewed the grounds for refusal;
2. Searched EU prior marks: the Deutschtec device mark (EU trademark 017200131) and word mark (017200148);
3. Filed office action appeals for 4 trademarks (Classes 6 and 19);
4. Signed the review engagement agreement with special authorization (to admit, abandon, or amend review requests and withdraw applications).

Step 3: Review and follow-up

1. Prepared the appeal statement and prior mark evidence;
2. Paid official fees and issued invoices;
3. Monitored the review progress and updated the client.

4. Legal Analysis

4.1 Document requirements for foreign companies

Situation: an overseas company applies for trademarks in China.

Risk: a poorly completed power of attorney or incomplete address can cause the application to be rejected.

Recommendation: print, sign, and seal the power of attorney; state nationality and Chinese address completely (for example, Germany and the German federal state); fill the address according to the business license.

4.2 Goods class selection

Situation: each class allows up to 10 items, with extra fees beyond that.

Risk: choosing the wrong items leaves core goods outside the protection.

Recommendation: select items based on the core business and actual use; quality matters more than quantity.

4.3 Office action appeal after refusal

Situation: the trademark is refused.

Risk: if the appeal is not filed within the statutory period, the application lapses.

Recommendation: review the grounds immediately after the refusal notice, use prior marks from the EU, Germany, or elsewhere, and file the appeal within the statutory period.

5. Recommendations for Clients

1. Prepare the power of attorney, business license, and drawings to the standard in advance to avoid correction requests;
2. Plan trademark coverage by class and goods items together, prioritizing core classes;
3. A refusal is not failure; EU/German prior marks are often the strongest appeal evidence;
4. Keep official fees and agency fees separate and confirm the overseas payment route in advance.

Frequently Asked Questions

Q1: Does a foreign company need to notarize and legalize its business license for trademark registration in China?

A: No. The translated business license can be prepared by the client itself; notarization and legalization are not required. A PDF scan of the original is sufficient.

Q2: Can the power of attorney be handwritten?

A: No. It must be filled out clearly, printed, and signed or sealed.

Q3: What if the trademark is refused?

A: You may file an office action appeal within the statutory period, relying on prior marks, distinctiveness, and market use evidence.

Q4: Are EU trademarks valid in China?

A: EU trademarks are not automatically effective in China, but they can be used as evidence of prior rights in office action appeals, oppositions, and other procedures.