- Time of issue:2019-09-27 09:32
- Time of issue:2019-09-27 09:32
What is a trademark in China?
Trademarks are any signs capable of distinguishing origins of goods of one natural person, legal person or any other organization from those of others, including words, devices, letters, numbers, 3-D signs, color combinations and sounds, etc., as well as combinations of the aforesaid elements.
What is a registered trademark in China?
China implements first-to-file system. A registered trademark refers to a trademark that has been approved for registration by Chinese Trademark Office of the State Administration for Industry and Commerce. It may include a trademark for goods, a service mark, a collective mark or a certification mark. The trademark registrants shall enjoy the exclusive right to use the trademarks, and be protected by law.
What are characters of right of a registered trademark/service mark in China?
1. Exclusive Right. The proprietor of registered trademark enjoys exclusive right to use the trademark.
2. Territorial Limit. The territorial jurisdiction of a registered trademark is mainland China.
3. Validity Limit. The term of registration is ten years as from the date of registration. It is renewable for ten-year periods if a renewal application is filed within twelve months prior to expiration. If a renewal application is filed within six month grace period after the date of expiration, additional official fee needs to be paid.
Which marks may be registered in China?
If a mark is applied for registration, it shall be so distinctive as to be distinguishable and shall not conflict with any other legal rights acquired earlier by others. Either, the mark itself shall also not be prohibited by law.
The registrable subject matter of trademarks are any signs, including words, devices, letters, numbers, 3-D signs, color combinations and sounds, etc., as well as combinations of the aforesaid elements.
Why register a trademark in China?
1. Registration is a kind of evidence of ownership and validity.
2. Registration helps promotion of quality of goods or services.
3. Registration is beneficial to advertisement in competitive market.
4. Prior registration can preclude others from registering an identical or similar mark.
5. The registrant has an exclusive right to use the registered trademark and may sue for infringement and cancellation of subsequent conflicting applications and registration.
6. Registration can generate royalties through licensing.
Should a trademark be searched before filing?
The purpose to conduct a search is to discover whether there have been priorly registered or applied-for marks which are in conflict with the searched mark in respect of identical or similar goods. If the search is not clear, the prefiling search could have saved the applicant the cost of filing an application.
Because China has the largest volume of trademark registrations and yearly applications, a prefiling search is often recommended.
Does the International Classification System apply in China?
Yes. China now adopts 《Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks》(10th Edition). China Trademark Office edits a Classification Table which includes both the goods and services translated and modified from the Nice Classification and some goods and services of Chinese characteristics added by the Office. In the Classification Table, the goods and services are further arranged in subclasses with headings and indications of similarity or dissimilarity among subclasses. Concerning national filing, descriptions of goods or services in an application should be “standard” as provided in the Classification Table or “specific” (not too ambiguous or broad) if no standard term can be used. Class or subclass headings cannot be designated.
Is multi-class application allowed in China?
Yes. Now an applicant can choose either single-class filing or multi-class filing. There is no restriction on the number of classes in one application.
Concerning national filing in China, what information must be provided?
See details on Filing Requirements for Trademark Application for Registration
What factors shall be considered in determining whether a mark is well-known in China ?
1. the degree of knowledge of the relative public;
2. the duration of use;
3. the duration of time, degree and geographical range of any publicity of the mark;
4. any record of the mark being protected as a well-known mark;
5. other factors which makes the mark well-known.
What kind of examination will a new application undergo?
An application will receive a preliminary examination to determine compliance with formal requirements and the existence of any conflict with earlier applications or registrations. Upon acceptance of the mark, it will be published for opposition for three months. If no opposition is filed during the period, the mark will be approved for registration.
Is First-to-File Principle adopted in trademark examination in China?
Yes. Where two or more applicants apply for the registration of identical or similar trademarks for the same or similar goods, the preliminary approval, after examination, and the publication shall be made for the trademark which was first filed.
How long is the registration process?
The registration process takes approximately 15 months from the filing date if it goes smoothly.
Is it possible to file a series application in China?
What is official rejection to a trademark application?
When a trademark the registration of which has been applied for is not in conformity with the relevant provisions of Chinese Trademark Law, or it is identical with or similar to another party’s trademark 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.
What information is published on Trademark Gazette?
After preliminary approval, the mark will be published on Chinese Trademark Gazette with the provisional number, filing date, mark specimen, designated goods or services, applicant’s name and address and its Chinese agent’s name.
Who may file a trademark opposition? How long is the opposition period?
Within three months as of the date of preliminary publication of a mark, anyone can file an opposition if it or he thinks the mark violates Articles 10, 11 or 12 (“absolute grounds”) of Chinese Trademark Law, or a prior right holder or a party with an interest can file an opposition if it or he thinks the mark violates Articles 13.2, 13.3, 15, 16.1, 30, 31 or 32 (“relative grounds”) of Chinese Trademark Law.
Where there is an opposition, the Trademark Office shall make a decision within 12 months of the date of expiration of the publication of the preliminarily approved mark. In special situations, an extension of six months can be approved.
What documents are required in filing an opposition?
See details on Filing Requirements for Opposition
What is an application for review on refusal of trademark application?
If an application is refused or partially refused in respect of part of designated goods or services and the applicant is dissatisfied with the refusal, it or he may, within 15 days from receipt of the notification of refusal, file an application with the Trademark Review and Adjudication Board for a review. The Board shall make a decision within nine months of the date of receipt of the review application. In special situations, an extension of three months can be approved.
If a partial refusal occurs, an applicant may also apply for division of application within 15 days of receipt of the notification of the partial refusal. After split, the application with unblocked goods or services generates a new application to be preliminarily published with a new filing number but reserved original filing date.
Concerning international registration designating territorial extension to China, if the Trademark Office rejects it, the foreign applicant can file, through an entrusted local Chinese agency, a request for review of the refusal before the Board within a period of 15 days from the date on which the foreign applicant, or his appointed representative, received from the International Bureau of WIPO the notification of such a refusal. When the date of receipt of the notification is illegible or absent, the request for review of refusal may be presented within a period of 30 days from the date where the notification was sent by the International Bureau of WIPO.
See details on Filing Requirements for Review on Refusal of Trademark Application for Registration
What is an application for review on the decision of trademark opposition?
If the Trademark Office rejects an opposition, the opposing party cannot appeal against the Office’s decision to the Trademark Review and Adjudication Board, but it can apply to the Board to invalidate the mark after it is registered, allowably on the basis of the same facts and grounds as the previous opposition, which is an exception to the general rule. By contrast, if the Trademark Office allows an opposition, the applicant of the opposed mark can appeal against the Office’s decision to the Board.
The Trademark Review and Adjudication Board shall make an adjudication within 12 months of the date of receipt of the opposition appeal. In special situations, an extension of six months can be approved.
See details on Filing Requirements for Review on Decision of Trademark Opposition
How long is the period of validity of a registered trademark?
Ten years, counted from the date of approval of the registration.
Must a mark be used after registration, and what happens if a mark is not used?
If a registered mark has not been used for three consecutive years without proper excuses, anybody can apply to China Trademark Office to cancel it.
When should renewal application be filed?
An application for renewal of the registration shall be made within twelve months before expiration of the period of validity. Where no application therefor has been filed within the said period, a grace period of six months may be allowed, yet extra fees shall be charged for the delay of renewal. If no application has been filed at the expiration of the grace period, the registered trademark shall be cancelled.
What is required to renew a registration?
See details on Filing Requirements for Renewing Trademark Registration
What is an application for recordal of assignment?
Where a registered trademark is assigned, the assignor and the assignee shall conclude a contract for the assignment, and jointly file an application with the Trademark Office. The assignee shall guarantee the quality of the goods in respect of which the registered trademark is used.
A trademark registrant shall assign, at one time, all the similar marks under its name in respect of identical goods, or all the identical or similar marks under its name in respect of similar goods.
An application can also be assigned.
Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
What is required to record assignment?
See details on Filing Requirements for Recording Assignment of Application/Registration
What is an application for recordal of license?
A registration can be licensed. According to Chinese Trademark law, any trademark registrant may, by signing a trademark license contract, authorize other persons to use his or its registered trademark. The licensor shall supervise the quality of the goods in respect of which the licensee uses his registered trademark, and the licensee shall guarantee the quality of the goods in respect of which the registered trademark is used.
Where any party is authorized to use a registered trademark of another party, the name of the licensee and the origin of the goods must be indicated on the goods that bear the registered trademark.
Where licensing another person to use its registered trademark, the licensor shall, within the period of validity of the license agreement, apply to the Trademark Office for the record. The record materials shall indicate the licensor, the licensee, the licence term, the scope of the licensed goods or services, etc. If the license is not recorded before ChinaTrademark Office, the license is not enforceable against bona fide third parties.
What is required to record license agreement?
See details on Filing Requirements for Recordal of Trademark License Agreement
Under what circumstances can a registration be cancelled?
The Trademark Office can cancel a registered mark on its own initiatives if the registrant, in the course of use of the registered mark, alters the registered mark or other registration matters and fails to make rectification with a prescribed limit of time.
Any entity or individual may apply to the Trademark Office to cancel a registered mark if the mark has become generic in respect of the designated goods, or if the mark has not been used for three consecutive years without proper excuses. The Office shall make a decision within nine months of the date of receipt of the application. In special situations, an extension of three months can be approved.
Under what circumstances can a registration be invalidated?
If a registered trademark violates provisions of Articles 10, 11, 12 (“ absolute grounds”) of the Trademark Law, or the registration is obtained through deceptive means or other improper means, China Trademark Office can announce invalidation of the registration; or other parties or individuals can request the Trademark Review and Adjudication Board to announce invalidation of the registration.
The Trademark Office shall notify in writing the party concerned of its decision of announcement of invalidation when it makes it. If the party concerned is dissatisfied with the Office’s decision, it or he may, within 15 days of receipt of the notification, file a review to the Trademark Review and Adjudication Board. The Board shall make a decision within nine months of the date of receipt of the application. In special situations, an extension of three months can be approved.
If other parties or individuals request the Trademark Review and Adjudication Board to announce invalidation of the registration, the Board shall notify in writing the party concerned of it and ask for its response within a definite time. The Board shall make a decision on either maintaining the registration or announcing invalidation of the registration within nine months of the date of receipt of the application. In special situations, an extension of three months can be approved.
If a registered trademark violates provisions of Articles 13.2, 13.3, 15, 16.1, 30, 31, 32 (“ relative grounds”), a prior right holder or a party with an interest can, within five years after the date of registration, request the Trademark Review and Adjudication Board to announce invalidation of the registration. As for bad faith registration, a holder of well-known trademark is immune to the five-year restriction.
The Board shall notify in writing the party concerned of the request for invalidation after the Board receives it and asks for a response from the party concerned. The Board shall make a decision on maintain the registration or announcing invalidation of the registration within 12 months of the date of receipt of the request for invalidation. In special situations, an extension of six months can be approved.
What acts are deemed as an Infringement of the Exclusive Right to Use a Registered Trademark?
Any of the following acts shall be an infringement of the exclusive right to use a registered trademark:
(1) using a trademark that is identical with or similar to a registered trademark in respect of the same or similar goods without the authorization from the trademark registrant;
(2) selling goods that infringe the exclusive right to use a registered trademark;
(3) counterfeiting, or making, without authorization, representations of a registered trademark of another person, or selling such representations of a registered trademark as were counterfeited, or made without authorization;
(4) replacing another party’s registered trademark, without authorization, and selling goods bearing such a replaced trademark;
(5) using any signs which are identical or similar to another person's registered trademark as the name of the goods or decoration of the goods on the same or similar goods, thus misleading the public;
(6) intentionally providing facilities such as storage, transport, mailing, concealing, etc. for the purpose of infringing another person's exclusive right to use a registered trademark.
How to protect the exclusive right to use a registered trademark in China?
Protection of the exclusive right to use a registered trademark can be achieved through both administrative means and judicial means.
Where any party has committed trademark infringement, the interested party can complain, usually through an entrusted agent, to local Administration for Industry and Commerce at or above county level (“AIC”), requiring the AIC to take enforcement actions. The complaints shall be put in the written form usually, noting relevant information and evidence, such as the name, address of the infringer, the place where the infringement took place or was found, and relevant marks which are suspected to have infringed registered trademarks or stuff like photos and so on. Once the AIC decides to deal with the case, it shall make an administrative decision and notify the complaint of it. If the case is so serious as to constitute a crime, it shall be transferred to the judicial authority for handling. Where any interested party is dissatisfied with the AIC’s decision on handling the infrigement, it or he may, within fifteen days from the date of receipt of the notice, institute legal proceedings in the People's Court according to the Administrative Procedure Law of the People's Republic of China. If there have been instituted no legal proceedings or made on performance of the decision at the expiration of the said period, the AIC shall request the People's Court for compulsory execution thereof.
The interested party may also institute legal proceedings in the People's Court directly, and the court will protect the legitimate rights and interests of the right owner according to the Civil Procedure Law of the People's Republic of China.
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