Trademarks in China are regulated by the Trademark Law of People's Republic of China and the Implementing Regulations to the Trademark Law both revised in 2013 and in force from May 1st 2014 in the last updated versions.
Trademarks in China shall be registered with the Chinese Trademark Office. Unregistered (de facto) trademarks have a very limited recognition within the legal system. A trademark is registered if the substantive examination and the opposition period are passed. Once granted, a trademark lasts for 10 years from the publication and can be renewed for further periods of 10 years.
Chinese Trade Mark Office (CTMO) under the State Administration for Industry and Commerce (SAIC) is the authority in charge for dealing with the procedure from filing to registration of trademarks. Administration for Industry and Commerce (AIC) as well as other authorities and People Courts are in charge of infringement and counterfeits administrative and judicial cases.
HFG services in the trademark area are listed below.
Before filing a trademark or before launching a new brand, it is generally advisable to conduct the proper searches to increase the chance of successful registration and reduce the odds of infringement against other people’s rights. Our team can manage the searches (in-house or via external software support) and provide a reliable outcome within a few days in order to support business decisions.
On a weekly basis CTMO publishes the Trademark Gazette (ShangBiaoGongGao) which includes all the trademarks preliminary approved, cancelled, transferred or licensed, etc. An effective monitoring of such Gazette might be useful to prevent abusive registrations by others via opposition.
According to the Trademark Law, any sign capable of distinguishing the goods or service including any word, design, letters of an alphabet, numerals, three-dimensional symbol, combinations of colors, and their combination, is available to be registered as a trademark. A mark with distinctiveness and capability of being identified and distinguished and not infringing other’s prior and lawful rights could be registered as a trademark. In mainland China, the smell trademark is not applicable for registration so far.
When applying for the registration of sound trademark, the registrar should use musical staff or numbered musical notation to describe the sound; meanwhile, the text description shall be attached. If the musical staffor numbered musical notation of the sound is unavailable, the text description shall be provided. The description of both trademark and voice sample shall be consistent.
Any applicant for the registration of a mark in China who has previously duly filed an application to register the same mark in connection with the same goods in a foreign country may enjoy the right of priority in accordance with any agreement concluded between the PRC and the foreign country concerned, or with the international treaty to which both countries are parties, or on the basis of the principle of reciprocity, provided that the application in China is filed within six months from the date on which the application was first filed in the foreign country.Anyone claiming the right of priority according to the preceding paragraph shall so state in writing at the time of filing the application and shall submit, within three months, a copy of the original in writing when it or he files the application for the trademark registration, and submit, within three months, a copy of the application documents it or he first filed for the registration of the trademark; where the applicant fails to make the claim in writing or submit the copy of the application documents within the time limit, the claim shall be deemed not to have been made for the right of priority.
Any natural person, legal entity or other organization can file the trademark registration application based on their business activities (note: there is requirement for Chinese citizen to file the trademark registration). The trademark application Mainland China should only be filed to the Trademark Office through a written application.
The written application of trademark registration can be submitted to Trademark Office or China Trademark net which is only available for trademark agency at present.
After the preliminary examination, the mark will be put on publication to the public, if it meets the basic requirement. The publication will last for 3 months for anyone else to oppose. If no opposition filed during the publication period, the mark could be granted for registration by the Trademark Office.
From the date of the grant of registration, the trademark is valid for ten years.An application for renewal of registration shall be made within twelve months before the expiration. If the trademark proprietor fails to do so within that period of time, an extension period of six months may be granted.
According to the Implementing Regulations of the Trademark Law, it requires at least 9 to 12 months to finish the trademark registration application in China.
Chinese entities and individuals can file an international trademark through World Intellectual Property Office based on national trademark registration.
According to the Trademark Law, any person may, within three months from the date of the publication, file an opposition against the applied trademark before its registration. If no opposition is filed within the period of publication, the trademark shall be approved for registration and certificate shall be issued by the Trademark Office.
Full report containing claims and supporting evidence materials is required to be submitted for opposition. The Trademark Office shall deliver a copy of the report to the trademark applicant, who will be requested to respond within 30 days from the receipt date.
According to the Trademark Law, the examination of opposition application lasts for 12 to 18 months. If the Trademark Office disapproves the registration of the opposed trademark, the Applicant can appeal for review of opposition to the Trademark Review and Adjudication Board. If the Trademark Office approves the registration of the opposed trademark, the Opposer can apply for the cancellation of trademark.
According to the Trademark Law, in the event that a registered trademark has violated the registration requirement and shall not be approved as trademark, any entity or person may request the Trademark Review and Adjudication Board to cancel its registration, by submitting supporting evidence.
According to the Trademark Law, if on absolute grounds, the trademark invalidation procedure lasts 9 to12 months; if on relative grounds, or rather, the trademark application is acting in bad faith, then the procedure lasts 12 to 18 months.(Note: the period of waiting for the judgment results of previous right case shall not be counted in the time limit).
From the date of registration, the prior right holder or interested party can apply for trademark invalidation to Trademark Review and Adjudication Board within five years. For malice registration, well-known trademark holders are not bound to the time restriction of five years.
According to Trademark Law the applicant of a trademark which sees the application provisionally refused can either do nothing and thus the refusal will be final and effective or file an appeal against such refusal to the Trademark Review and Adjudication Board within 15 days from the receipt of the notice of refusal (or 30 days from issuance of the refusal decision).
If the trademark application covers more than one class (it is called a “multiclass application”) and one or some of the classes are rejected and some approved for registration, according to the new clauses in the Implementing Regulations of the Trademark Law, the Applicant can divide the trademark application into another application.
According to the Trademark Law, such review application lasts 9 to 12 months. (Note: the period of waiting for the judgment results of prior right case shall not count towards the time limit. When proposing the 3-year non-use for prior trademark, the Applicant should wait for the confirmation of a prior trademark right.
According to the Trademark Law, if the Applicant is dissatisfied with the Trademark Office’s disapproval of the trademark registration, they can appeal for a review to the Trademark Review and Adjudication Board (TRAB), within 15 days upon receipt of the official notification.
The TRAB should notice the original opposed party to attend and advise when judging the review case which is dissatisfied with Trademark Office's decision. If the proposition of the original opposed party has actual influence on the result of the case, it can be the basis of the judgment. If the original opposed party doesn't attend or advise, no influence will be on the case. According to the Implementing Regulations of the Trademark Law, the trademark review procedure lasts 12 to 18 months.
Note: the period of waiting for the judgment results of prior right case shall not be counted within the time limit.
According to the Trademark Law, any entity or person can file a cancellation application against the registered trademark if there is evidence to prove its non-use status for three continuous years. The Trademark Office will order the trademark owner to respond with a supporting document to prove its usage facts or non-use explanation within 2 months after the cancellation application, and if the response contains a lack of substantial reasoning, the Trademark Office has the right to revoke the registered trademark.
According to the Implementing Regulations of Trademark Law, the cancellation procedure of a trademark 3 –year non-use requires 9 to 12 months to finish.
According to the Trademark Law, the trademark proprietor is entitled to make a change on the name, address or other registered information, but it is required that a file of recordation is submitted. The Trademark Office shall order to rectify it or even cancel the registration if no change is filed in advance.
For a name change application, it is required that the official document issued by relevant authority is provided regarding its change.If the applicant fails in providing the supporting document, the applicant then has 30 days to supplement it.
While in the event that the applicant does not provide any supporting document after 30 days, the Trademark Office shall abandon the change of application in written notification. Once the applicant files the changed application, it should cover all its trademarks.
According to the investigation practice, change procedure lasts 3 to 6 months in China.
According to the Trademark Law, the trademark owner may license another entity or person to use its registered trademark through signing a license contract. The trademark usage license contract shall be recorded in the Trademark Office within the period of validity. Without record, the contract is still effective, but cannot be used to oppose the third party acting in good faith.
The valid time limit of the authorized trademark in trademark usage license contract should not be overdue that of trademark registration.
The required documents include the copy of identification document of both parties. Generally it will take 9 to 12 months to finish the recordation of a trademark usage license.
According to the Trademark Law, both application and registered mark can be assigned to another person. Parties shall conclude an assignment contract in written and jointly file an application to record the assignment to the Trademark Office. The assignment of a registered trademark shall be examined, approved and published on the Trademark Gazette. If no assignment is filed to the Trademark Office, Trademark Office shall order to rectify it or even cancel the assignment.
All identical and similar trademarks on same or similar goods shall be assigned together.
According to relevant requirement in Mainland China, the assignment procedure lasts 9 to 12 months.
According to the Trademark Law, after the Trademark Review and Adjudication Board (TRAB) have made a ruling, they shall notify the party concerned of the ruling in writing. Where the party is dissatisfied with the ruling of the TRAB, they may, within 30 days from the date that the notification is received, bring a suit in a People's Court. The People's Court shall notify the other party involved in the trademark adjudication proceedings to take part in the legal proceedings as the third party.
In general, change procedure lasts 12 to 18 months in China.
According to the Trademark Law, the trademark proprietor is entitled to make a change to the name of an agent, but is required to file a recordation.
After the change of agent, the Trademark Office will notify the trademark proprietor through the new agent, about the trademarks matters.
It is only available specifically for that registered trademark or the applicant themselves, to make a change to the name of agent.
In general, the change procedure lasts 3 to 6 months in China.
According to the Trademark Law, if the trademark proprietor needs to continue to use their registered trademark after the period of validity expires, an application for renewal of registration shall be made within 12 months before it expires. If the trademark proprietor fails to do so within that period of time, an extension period of 6 months may be granted. If no application is filed before the extension period expires, the registered trademark shall be cancelled.
After renewal of registration is approved, it can then be announced. The period of validity for each renewal of registration is for 10 years.
In general, change procedure lasts 6 to 8 months in China.