Trademark registration as we know is territorial in nature. So we have to file individually in each country, where we wish to register our trademark. As we are discussing the trademark filing procedure in china, we must have to witness that China has its own sort of laws and rules, which is very different from other foreign countries with respect to filing of Trademarks. It has been noted that most of the trademark practitioners often overlooked some common pit-falls during the trademark prosecution process. Here, we will discuss the filing procedure and some of the essential points to gain more and suffer less in the arena of trademark in china.
Wait, before discussing that, we must know the benefits of international registration of trademarks are:
Registration of trademarks in foreign countries provides an entity the exclusive right to commercialise its product in those countries.
This will not only provide a solid foundation to oppose the counterfeiters but also ensure that the entity will enjoy the exclusive rights.
It will also provide the trademark owners the opportunity to license its trademark to others or also it can be permitted to franchise or merchandise others.
Trademark registration process in China
When a trademark application is filed like other countries, the China Trademark Office (CTMO) will also review the application. Then an official receipt will be issued, which usually takes about 15-30 days to issue the same. The CTMO will then examine the application which shall take about 8 months. If everything goes in a proper manner, the owner of the trademark will receive a preliminary publication notice within 9 months from the date of filing of application. Then the 3 months opposition period will continue, if there will be no objection or opposition from any of the parties, then the trademark will be approved for registration. The whole process will take about 12 months in total.
Procedure and timelines
Obtain the official receipt: within 15-30 days;
Notification for publication: around 9 months;
Notification regarding the registration: around 12 months; and
Delivery the hard copy of the registration certificate: around 14 months.
Unlike any other foreign countries, China belongs to a “First to File” country. It means that the first person who will file the trademark application will generally have priority over the mark which was first used in commerce.
Process that has to be followed before filing for a trademark in China
Conducting trademark Search The CTMO provides a free service to search any trademark in its official website. However, for comprehensive search a Chinese trademark attorney is more preferable. One shall never rely on any online commercial database to conduct the trademark search.
Confirm how to file the trademark
As we all know, a trademark may be a Word mark or may be a logo mark, which makes the result quite different from others. So it is always suggested to file the mark the way it is actually used. If budget is not a concern, then one shall file two different trademarks with two different forms. Word marks always protect in a broad manner but the combined logo mark always shows the genuine proof of use and avoids any non-use cancellation.
Differentiate the goods or services
The trademark classification system of China is also based on the International NICE classification system but with some necessary changes as per their requirements. They have developed a sub-classification system for each of the 45 classes. The classification of goods in each class are divided into several subclasses as per their functions, raw materials and sales channels and as far as the services are concerned, it is divided as per their content and target consumers.
While filing the application, one must select the Goods or services carefully as per the Chinese sub-classification book. If the Goods/Services applied are not as per the list mentioned in the Chinese sub-classification Book, are likely to be rejected. Unlike many other countries here the selection of goods or services must be closest to the specific goods of interest, as the list is very limited.
For this specific reason one must stick to the specific items available in the list else you will receive several office actions. It will be issued to modify the specification, which will only delay the examination period for around two months and some additional costs will also be charged.
The number of subclasses varies a lot within the different classes. There are ‘small’ classes which include a maximum of five subclasses, ‘medium’ classes usually contains 10 subclasses and in the ‘Large’ case, it contains 54 subclasses. Let’s understand this with few examples of each category.
Check the name and address of the applicant both in English and Chinese
The name and address of the applicant must be the same as per the Company Incorporation Certificate or the passport of the individual applicant.
Also the applicant must have to translate his name and address to Chinese as it is a compulsory requirement, for doing the same one can hire an agent who is expert in that field.
When all of the above process is duly confirmed, one shall have to sign a power of attorney if required at this stage and other required documents are:
Application Form (not required in case of an online application);
Scanned copy of the Power of Attorney, shall be signed by the applicant; and
Scanned copy of the applicant’s Company Incorporation Certificate or the passport of the individual applicant.
After preparation of all the documents, the trademark is ready to be submitted. As we know China belongs to a “First to File” country, it means a lot to get a prior application date for the trademark registration process in China.
Cancellation for non-use of marks
In accordance with the Chinese trademark law, once a trademark is registered, it shall be open for non-use cancellation, which anyone can initiate. While providing the evidence for non-use cancellation, the burden of proof is totally upon the registrant’s side. If the registrant failed to provide sufficient and any justifiable reason for non-use of a registered mark, it will be cancelled accordingly.
The following are the key information which must be included while providing the evidence
User: The user of the registered mark shall be the trademark owner or its authorised party;
Date: The use of the registered mark must be within the three years prior to the initiation date of non-use cancellation;
Mark: The mark must be same as the registered one;
Goods/Services: The goods/services on which the mark is registered must be within the ambit of protection of trademark registration; and
Territory: The territory must be within China.
Conclusion Chinese market is becoming attractive and more important day by day. Hence, it is also crucial for the business owners to protect their trademark right in an effective way. So developing better and effective ways of protection strategies and maintaining the trademark right throughout the period shall provide the foreign business owners to continue their businesses with more favourable opportunities in China.
It is always advisable to file the marks in China directly, with a specially drafted trademark specification by mentioning promptly all the subclasses within each class, as it is very much essential and it will also provide the broadest scope of protection of your mark.