China, officially the People’s Republic of China (PRC), is a member state of a great deal of multilateral conventions regarding intellectual property rights including those for the protection of trademark such as the Madrid Agreement concerning the International Registration of Marks (in force as of October 4, 1989) and the Protocol Relating to the Madrid Agreement (in force as of December 1, 1995) (collectively known as “the Madrid system”). Accordingly, to obtain protection of a trademark in China, trademark holder may either file through national route or international route (the Madrid system), of course, applicants whose nationality or real and effective industrial or commercial establishment must belong to one of the Madrid system’s 91 member-states as of October 15, 2014. Below guidance merely relates to acquiring a registration of a trademark via national route.
- The current law governing the establishment and enforcement of exclusive right over trademark in the whole territory of PRC China exclusive of Taiwan and Hong Kong is the 2013 China Trademark Law that took effect as of May 1, 2014
- Registration, which is granted based on “first to file” principle, is mandatory to establish exclusive rights to a trademark.
- Multiple classes filing has been just available according to the China Trademark Law
- The China Trademark Office (CTMO) now only accepts goods/services under the tenth Nice Classification. Class heading or new goods/services can hardly be accepted.
National Route Is More Preeminent Than International Route
Basically speaking, filing new trademark application via the national route in replacement of the Madrid system into China is more recommended because of the following reasons:
- The cost payable for international application designating China via the Madrid system may be threefold or fourfold higher than the one via the national route;
- More importantly, the timeline to request review of refusal is very different between the two routes. The Chinese Trademark Office (CTMO) requires that applicant request review of refusal strictly within 15 days from date of receipt of such refusal notification, which cannot be extendable. Also, applicant is required to provide envelope with postmark showing the receipt date received by applicant or his representative. Otherwise, the request of review of refusal will not be accepted. While application filed via national route is not required to do so. Accordingly when it comes to file request of review of refusal, the national route is much more convenient.
- Specification of goods/service bearing a proposed mark, if is filed via national route, will be identified by us as exactly particular as possible to completely comply with the Chinese strict classification of goods/service. While the classification of goods/service designated via the Madrid system may not conform to the Nice classification and that may lead to refusal of application.
- When it comes to cancellation of non-use, according to the Trademark Law of China, if the owner does not file any answer to the cancellation request, his mark will be cancelled. Registrant of an international registration extended to China usually receives such notice too late because of such notice is always sent directly to the registrant himself, not his representative recorded on WIPO, causing him not to have enough time to counter-appeal.
- Furthermore, a trademark application filed via national way will be granted a certificate of registration, whilst a trademark application filed via the Madrid system does not have a certificate, only statement of grant of protection. When the applicant does business in China, it is important and more convenient to have a registration certificate rather than statement of grant of protection.
- Last but not least, due to the possible legal risk by the so-called “central attack” regulation provided by the Madrid system, thereby it is noted that if a US trademark application or registration, on which a valid international registration of mark in China is based, is rejected or successfully cancelled because of any reason within five years from the date of international registration, the international registration will be invalid in China as well as any other designated countries.
No trademark definition included in the 2013 China Trademark Law. However, the following marks (signs) that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
- certain three-dimensional shapes;
- sounds (sound mark is accepted after May 1, 2014.);
- trade dress/get-up (not all kinds of trade dress/get-up can be accepted for trademark registration; only trade dress with distinctive elements can be accepted)
In addition to regular trademark registrations, the following types of trademarks are registrable:
- collective marks;
- certification marks;
- well-known marks;
- service marks.
Marks Ineligible for Protection
- marks contrary to moral standards or public order;
- generic terms;
- names, flags or symbols of states, nations, regions, or of international organizations;
- non-distinctive trademarks absent a showing of acquired distinctiveness (secondary meaning);
- marks that function principally as surnames;
- marks that function principally as geographic location names (other than Geographical Indications or Appellations of Origin);
- marks that may mislead consumers.
Where a trademark the registration of which has been applied for is not in conformity with the relevant provisions of this Law, or it is identical with or similar to the trademark of another party that has, in respect of the same or similar goods, been registered or, after examination, preliminarily approved, the Trademark Office shall refuse the application and shall not publish the said trademark.
A trademark that is applied for registration in identical or similar goods shall not be registered and its use shall be prohibited, if it is a reproduction, an imitation or a translation, of another party’s well-known mark that is not registered in China and it is liable to create confusion.
A trademark that is applied for registration in non-identical or dissimilar goods shall not be registered and its use shall be prohibited, if it is a reproduction, an imitation or a translation, of a well-known mark which is registered in China, misleads the public, and the interests of the registrant of the well-known mark are likely to be damaged by such use.
Requirements for Filing New Trademark in China
- A Power of Attorney simply signed by a person with legal authority to bind a juristic applicant in favor of a Chinese IP agent chosen by us. No notarization or legalization is required. (A form will be provided later)
- A certified copy of the applicant’s Certificate of Incorporation.
- Class and List of goods/services under the tenth edition of the Nice Classification.
- The applicant’s name and address in Chinese and English (If applicant does not have the Chinese name and address in use, we may propose the Chinese translation for your confirmation).
- Description of trademark;
- Reproduction of trademark (a depiction of the mark an applicant seeks to register);
- Certified copy priority documents if the priority right is to be claimed.
- Multi-class application has been just accepted by China according to the China new trademark law in force as of May 1, 2014.
- Proceeding with a multi-class application is not highly recommended because of Chinese practical and statutory reasons:
- Firstly, when assigning a trademark, all classes of the application must be transferred together. At least it is the current situation. Now, division of trademark application happens only when an application is partially rejected, the applicant can choose to divide the application to allow approved parts to be published then registered being given a new trademark number, while the refused parts enter into time lasting review phase or simply being given up. However, trademark application division is not applicable to any other situation.
- Secondly, multiple classes application does not help to save filing fees, official fees are still calculated by classes and no discount for additional classes.
Statutory Timeline for Registration of Trademark
Where an application for registration of a mark goes smooth, it takes about 14-18 months counting from the filing date to receive a certificate of registration.
(a) Formality check
If your filed application is in good order, complete, and if you have included the correct fee, a filing date and an application number will be assigned to your application, a formal filing acknowledgement will be available in 4-6 weeks.
A trade-mark examiner will review your application and determine if the trade-mark can be approved for advertisement in the Trade-marks Journal. If there are any doubts about your application, the examiner will notify you of the objections. If the examiner issues a notice of deficiency, then applicant need to remedy any deficiencies within prescribed time. If the examiner issues a refusal, the applicant needs to file request of review of the refusal with Trademark Trial and Appeal Board within 15 days from receipt of the refusal notification. The statutory time limit for examination takes about 9-12 months.
If it is approved, your application will be published in one issue of the Trade-marks Journal, which is published weekly, within three months of being advertised, others can oppose your application.
If there is no opposition, or if an opposition has been decided in your favor, your application will be entered on Register and the registration will be published. You will also receive a certificate of registration within 1-2 months after registration.
Term of protection of a registration of a trademark is 10 years, calculated from the registration date. Renewal may be conducted within six months prior to the expiry date of the registration.
It is possible to file a request for late renewal in a grace period, i.e. no later than six months after the expiry date of the registration against payment of a surcharge. If a registered trademark is not used in three consecutive years after registration, it would be vulnerable to a non-use cancellation action.