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Chinese Trademark Registration

 

Chinese Trademark Registration Guideline

l        Overview

A trademark is a distinctive sign identifying certain goods or services as those produced or provided by a specific person or enterprise. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs. Trademark registration gives owners exclusive rights enabling them to prohibit any third parties from using the sign in their commercial or industrial activities. In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

In China, any visual sign capable of distinguishing the goods or services of one natural person, legal entity or any other organization from that of others may be registered as a trademark, particularly including words, drawings, graphics, logos, symbols, designs, acronyms, letters, numerals, portraits, distinctive slogans, three-dimensional signs such as the shape and packaging of goods, combinations of colors, and combination of these elements etc. Sound and smell, not visually perceptive, are not registrable according to the current Chinese Trademark Law.

l        Filing

 

Documents and information are required for filing a trademark application in China:

(a)    Name and address of the applicant. Chinese translation version of the name and the address are also needed.

(b)    Goods/Services on which the trademark is used on.

(c)    A reproduction of the trademark in black and white. If color is to be protected, eight color reproductions of the trademark are required. For a three-dimensional trademark application, a reproduction that is capable of defining the three-dimensional formation is required.

(d)    A copy of ID or passport is necessary when the applicant is an individual.

(e)    A Power of Attorney simply signed by the applicant. Neither notarization nor legalization is required.

(f)    Filing particulars of home application, including filing date, filing number and country, are necessary when a priority is claimed. A certified copy of the home application should be filed within three months from the date of filing.

l        Formation and substantive Examination

The China Trademark Office (“CTMO”) shall assign trademark examiner to conduct examination in turn by the date of filing when receiving the trademark application. The examination includes formality examination and substantive examination. Formality examination will be conducted to examine whether the application documents are complete or the formalities are all ready at this stage, including:

(a) Whether the applicant is qualified.
(b) Whether the documents as filed are authenticable and correct.
(c) Whether the description of the goods/services are clear and specific.
(d) Whether the trademark reproduction is clear enough.

If the CTMO holds that the application does not conform to the requirements of the formality examination, the CTMO will issue Notification of Amendment to require the applicant to make the corresponding amendment(s) within a prescribed time limit. The formality examination does not determine whether or not the trademark is registrable.

Substantive examination will be conducted to examine whether the trademark is in line with the substantive requirements of registration. Two points are particularly considered during the substantive examination. The first point is to examine whether the trademark is contrary to Article 10, Article 11, Article 12 and Article 16 of the Trademark Law (“absolute refusal grounds”), then the second point is to examine whether the trademark is identical with or similar to the earlier trademark in respect of the identical or similar goods according to Article 28, Article 29 and Article 31 of the Trademark Law (“relative refusal grounds”).

One of the following results may occur after the trademark application is substantively examined:

(a) Preliminary approval: If the CTMO does not find any refusal ground after the substantive examination is completed, the trademark application would be published in turn for opposition in the trademark gazette.
(b) Partial refusal: partial refusal means that the CTMO issues the notification of partial refusal and requires the applicant to delete the identical or similar goods/services if the trademark is identical with or similar to an earlier trademark in respect of identical or similar goods. However, the trademark may be registered on the remaining and different goods/services.
(c) Total refusal: total refusal means that trademark examiner issues notification of refusal to totally refuse the trademark application if the trademark is identical with or similar to an earlier trademark in respect of the identical or similar goods.

The applicant may, within fifteen days from receipt of the notification, file a review with the Trademark Review and Adjudication Board (“TRAB”) if it is dissatisfied with notification of partial refusal or total refusal made by the CTMO. Upon receipt of the decision made by TRAB, the applicant has, within thirty days from receipt of the notification, an opportunity of instituting administrative legal proceedings before the Beijing No.1 Intermediate People’s Court for further remedy.

Since the substantive examination system is adopted, not every trademark application can be smoothly registered in China. According to our practice, nearly 20 percent of trademark applications would be refused by the CTMO after the substantive examination is completed.

l        Publication and opposition

When trademark applications are substantively examined and conform to the substantive requirements of registration, the trademarks will be published in the weekly trademark gazette for the public opposition. Any person may, within three months from the date of the publication, file an opposition against registration of the trademark. The period of the opposition is non-extendable.

l        Registration and duration

Where no opposition is filed against the trademark application within three-month opposition period, registration will be consequently granted and thereafter the certificate of registration will be issued by the CTMO. In most cases, the applicant will receive the certificate of registration within 1-2 months after the expiration of the opposition period.

The period of validity of a registered trademark shall be ten (10) years, counted from the date of registration, during which no extra official fee needs to be paid.

l        Renewal

The owner of registered trademark should file a renewal application for the trademark registration within six months before the expiration of the duration. Where no renewal application is filed within the said period, the owner still has an opportunity of renewing his trademark within a six-month grace period after the expiration of the duration, but an additional official fee should be surcharged.


                                    Procedure Flow Chart – Trademark Application in China

 

A trademark application has the following complete procedures from the filing to registration:

(a)    Filing receipt (Filing receipt is generally issued in about 1-2 months from the date of filing).

(b)    Formality examination (3-6 months from the date of filing).

(c)    Substantive examination (18-24 months from the date of filing).

(d)    Publication and opposition (24-32 months from the date of filing).

(e)    Registration and issuance of certificate of registration.

Procedure Flow Chart – Trademark Application in China

 


1-2 month

from filing

3-6 months

from filing

18-24 months from filing

24-32 months from filing

Registration

Filing receipt issued

Formality Examination

Substantive Examination

Publication and Opposition

Amendment

Refusal

Respond to opposition

Filing a review with the TRAB

Filing

At present, as the numbers of trademark applications are rapidly increasing in recent years, it is generally take the CTMO almost 24-32 months to finish the examination from filing.

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