Legal review: reviewed by Nathalie Dreyfus on 14 August 2026. This general information is not legal advice for a specific matter.
Cross-border intellectual property work moves faster when the local counsel receives a complete, structured instruction at the outset. For Chinese IP firms and agencies, the most useful instruction identifies the client correctly, defines the territory and business objective, records every relevant deadline and supplies the documents needed to act.
This guide provides a practical checklist for trademark and related IP matters in France and before the European Union Intellectual Property Office, or EUIPO. It is intended to support coordination between Chinese counsel and French or EU representatives. It is not a substitute for advice on a specific matter.
The short answer
A complete instruction should cover nine points:
- The applicant or rights holder.
- The sign or right concerned.
- The territories and filing route.
- The goods, services or protected subject matter.
- Priority details and procedural deadlines.
- Earlier searches, rights and disputes.
- The required scope of work.
- Reporting, confidentiality and client visibility.
- Budget, billing and approval rules.
Where information is not yet available, identify the missing item and the date by which it will be supplied. This is safer than leaving counsel to infer the client’s intention.
1. Identify the applicant or rights holder precisely
Provide the full legal name, registered address, legal form and country of incorporation of the client. The English transliteration should match the version used in previous international filings and corporate documents.
Where relevant, include:
- a current company registration extract;
- the name in Chinese characters and the approved Latin-character version;
- details of any recent merger, assignment or change of name;
- the relationship between the instructing firm, the ultimate client and any affiliate that uses the right;
- the intended billing entity.
Ownership inconsistencies can create formal objections, priority problems and difficulties when evidence must later be filed. They should be resolved before the application whenever possible.
2. Supply the exact sign or right to be protected
For a trademark, specify whether the client wants to protect a word mark, a figurative mark, a combined logo, a three-dimensional sign or another accepted type of mark.
Attach the final version of the sign. Do not send several logo variants without identifying which one should be filed. If both a Chinese-character mark and a Latin-character mark are commercially important, ask counsel to assess whether separate applications are appropriate.
The instruction should also clarify:
- the meaning and pronunciation of Chinese characters;
- any intended French or European transliteration;
- colours that are commercially significant;
- slogans or secondary brand elements;
- whether the mark is already used in France or the European Union.
3. Define the territory and commercial objective
“Europe” is not a sufficient territorial instruction. Confirm whether the client needs:
- protection in France only;
- a European Union trademark covering the EU Member States;
- selected national applications;
- an international registration designating France or the European Union;
- a coordinated combination of these routes.
The right filing route depends on where the client will sell, manufacture, license, exhibit, distribute or enforce. A France-only filing may be appropriate for a focused national project. An EU trademark can provide unitary protection across the European Union, but the risk assessment and procedural consequences are different.
For applicants based outside the European Economic Area, representation before the EUIPO is generally required for proceedings after the filing of the application. Appointing the representative from the outset helps avoid formal deficiencies and centralises official communications.
4. Prepare a commercially accurate list of goods and services
Trademark protection is linked to the goods and services identified in the application. The list should reflect the client’s actual and reasonably anticipated business, not simply reproduce a very broad list from an unrelated filing.
Provide:
- the client’s current products and services;
- planned European products, services and distribution channels;
- priority product lines;
- relevant Nice classes from earlier filings;
- any items that must be excluded for commercial or coexistence reasons.
The EUIPO recommends clear and precise wording and provides TMclass terms that have already been accepted by participating offices. It also warns against unnecessarily long lists, which may increase conflict and future non-use risks.
5. Record priority and every live deadline
If priority is claimed, provide the country, filing date, application number, applicant name, representation of the mark and the goods and services covered by the first filing.
Priority claims for French and EU trademark applications generally need to be made within six months of the first qualifying application. The local counsel should receive the instruction early enough to verify the data and obtain any supporting document or translation.
For an opposition, cancellation, office objection, appeal or customs matter, state the deadline in the first paragraph of the instruction. Include the source of the deadline, the date and method of service, and the official notice.
Never rely only on a calendar entry. Send the underlying communication so that local counsel can independently confirm the calculation.
6. Disclose relevant searches, earlier rights and disputes
Attach any search report already obtained in China, France, the European Union or another relevant market. Explain how the client assessed the results and identify any earlier right that requires particular attention.
Also disclose:
- previous refusals or objections;
- oppositions, cancellations or coexistence discussions;
- settlement agreements and territorial limitations;
- distributors or former partners using similar signs;
- domain names and social-media accounts linked to the brand;
- known counterfeit or parallel-import activity.
The purpose is not to duplicate the Chinese counsel’s analysis. It is to let the French or EU counsel assess how those facts affect local filing and enforcement strategy.
7. Define the requested scope of work
State whether the instruction covers:
- preliminary availability screening;
- a full clearance search and legal assessment;
- drafting or reviewing the specification;
- filing and prosecution;
- opposition monitoring;
- responding to an objection;
- negotiating with an earlier-rights holder;
- customs recordal or online enforcement;
- portfolio coordination and renewals.
If the instruction is limited to a procedural filing, say so. If strategic advice is expected, identify the business decision that the advice must support.
8. Agree on reporting and client visibility
Chinese IP firms use different cooperation models. Dreyfus can coordinate on a confidential white-label basis or participate visibly as French and EU counsel, subject to conflict and professional requirements.
Confirm:
- whether reports should be addressed only to the Chinese firm or copied to the client;
- the preferred language for reporting;
- the authorised client contacts;
- whether the Chinese firm will consolidate advice from several jurisdictions;
- the expected reporting format;
- any internal approval deadline before an official deadline.
For urgent files, indicate a Beijing-time contact and the preferred channel for operational messages. Substantive instructions and approvals should still be documented in a durable written form.
9. Set budget and approval rules before work begins
Ask for a scope and fee estimate that distinguishes professional fees, official fees, search costs, translation costs and possible third-party expenses.
The instruction should identify:
- the entity to be invoiced;
- the required purchase-order information;
- the currency and tax information;
- the amount above which further approval is needed;
- whether alternative strategies should be costed separately.
Clear approval rules reduce delays when an official deadline is approaching.
A reusable instruction format
Chinese counsel can use the following structure:
Matter and deadline
Type of action, territory, official deadline and internal approval deadline.
Client and ownership
Full legal identity, corporate documents and relationship between relevant entities.
Right concerned
Application or registration number, sign, owner, status and attached official documents.
Commercial objective
Markets, products, timing and desired outcome.
Background
Earlier filings, searches, disputes, agreements and known risks.
Requested work
Precise scope, deliverables and reporting format.
Budget and approval
Billing entity, fee expectations and approval limits.
Attachments
Numbered list of notices, certificates, evidence and translations.
What happens after the instruction is received?
A well-organised local counsel should normally:
- Run a conflict check.
- Confirm receipt and the working deadline.
- Identify missing documents or assumptions.
- Confirm the scope, fees and next steps.
- Advise on the appropriate French or EU procedure.
- Report official filings and communications with clear action points.
Confidential documents should not be sent before the conflict check has been completed and the communication channel has been agreed.
Practical example: an urgent priority filing from China
Illustrative scenario: this example reflects recurring cross-border issues and is not a description of a specific client matter.
A Chinese IP agency receives instructions two weeks before a six-month priority deadline. The client’s English company name differs from the spelling used in the first filing, and the goods list was copied directly from the Chinese application. French counsel verifies the correct applicant and first filing, flags the wording that needs review, confirms the priority documents and records a Beijing-time approval deadline. This resolves entity and priority issues before filing and preserves a clear window for client approval. The outcome of any matter remains fact-dependent.
Frequently asked questions
Can a Chinese company file an EU trademark?
Yes. A natural person or legal entity from any country can apply. However, a party without a domicile, principal place of business or real and effective commercial establishment in the EEA generally needs an eligible EEA representative for proceedings before the EUIPO after filing.
Should the Chinese-character and Latin-character marks be filed together?
That depends on how the marks are used and on the protection sought. Filing them as one combined sign protects that combination. Separate applications may be considered when each element has independent commercial importance.
Should a Chinese specification be copied into a French or EU application?
Not automatically. The terms should be reviewed against the client’s European commercial plan and the requirements of the relevant office. Clear, precise and appropriately scoped wording is essential.
Can the Chinese IP firm remain the only visible contact for the client?
A white-label coordination model can often be organised. The official record and communications must nevertheless comply with the representation and procedural rules of the relevant office.
How Dreyfus supports Chinese IP firms
Dreyfus & Associés assists Chinese IP firms and agencies with French and EU trademark matters, oppositions, cancellations, enforcement, customs actions, domain names and related disputes. The cooperation model can be adapted to the Chinese firm’s reporting and client-management requirements.
Contact our team for an initial conflict check and a clear assessment of the next procedural steps. Please do not send confidential evidence before the conflict check.
Official sources
- EUIPO, application and registration procedure
- EUIPO, goods and services
- INPI, filing a French trademark
- INPI, key stages of a French trademark application
