Trademark registration in China follows first “First-to-file” principle. Nice international classification for goods/services is applied in China. This post included: introduction of Trademark in China, Trademark rules in China, Trademark protection in China, cost, process and required documents for registering trademark in China.
What is a trademark registration in China?
Before going detailed into the definition of a trademark, it is necessary to understand what a “mark” means.
A trademark is a sign used to distinguish the goods and/or services of a producer/provider from those of other producers/providers.
The sign may be composed of words, devices, letters, three-dimensional signs (shapes), a combination of colors or any combinations of the mentioned-above factors.
The sign must be visually perceptible, which means sound or smelt marks cannot be registered in China
Trademark rules of China
Pursuant to the Chinese Trademark Law, “First-to-file” principle is seen as the one to protect the applicants’ priority right. A brand owner possesses a valuable trademark and wants it to be protected from other owners, he/she will submit a trademark application to the national office of Intellectual Property in order to be granted a protection title for his/her trademark. This rule means the trademark application of the brand owner will have a priority to be considered to be protected even though that trademark was used first by another owner.
Required Documents for registration trademark in China
- An application form for trademark registration
- 05 copies of trademark are printed on smooth and clear paper or replaced by photographs not larger than 10×5 cm; If color is claimed, 05 copies of colored reproductions of the trademark and 01 copy in black and white
- If applying for the registration of a three-dimensional sign as a trademark, it should be indicated in the application, and the applicant shall submit a reproduction thereof by which the three-dimensional shape can be determined.
- If applying for the registration of the combination of colors as a trademark, it should be indicated in the application, and the applicant shall submit the descriptions thereof.
- If applying for a collective mark or a certification mark, they should be indicated in the application, and the applicant shall submit the documents certifying the qualifications of the subjects and the rules on the administration of the mark use.
- If the foreign words are included in the trademark, they must be translated into Chinese.
- A notarized copy of an applicant’s passport (if the applicant is an individual) or a notarized copy of enterprise registration certificate (if the applicant is an organization)
- The Power of attorney
The process of trademark registration in China
The registration procedure includes 04 stages:
Step 1. Filing an application of registration for a trademark
Step 2. An examination of formality: The examiner will verify whether the trademark file is complete and the corresponding fees have been paid.
Step 3. A substantial examination will be conducted. At this stage, the examiner verifies whether all the other requirements, absolute grounds (legality, non-functionality, distinctiveness) and relative grounds (availability) are met. Once the trademark has passed this examination, the trademark is preliminarily approved for registration.
Step 4. Publication in the official trademark gazette. An opposition can be filed with the Chinese Trademark Office by any third parties in 03 months since the date of publication. If the opposition period finishes without any appeals by any interested parties (or being filed but failed), the trademark is registered and granted a Protection Title (PT). The validity of a PT starts from the date of issue and the duration for an exclusive protection are 10 years since the date of application filing. The timeframe from the date of filing to the final stage of publication should now be approximately 18 months unless an opposition to the registration is filed.
How much does it cost for registering trademark in China
The official fees of trademark applications are listed below:
|Matters||Official fees (RMB)|
|Trademark application fee per mark, per class (maximum 10 goods/services in one class)||300|
|Surcharge for additional items in one class (in case the number of goods and/or services exceed 10 items)||30/item|
|Replacement registration fee||500|
|Assignment of registered mark||500|
|Renewal of registered mark||500|
|Late filing surcharge||250|
|Appeal fee for rejected application||750|
|Fees for change of matters||150|
|Certified copy of registration certificate||50|
|Fees for the application of collective mark||1500|
|Fees for the application of certification mark||1500|
|Trademark license record||150|
Note: In case, an international application is designated to China through the Madrid System for the International Registration of Marks, the official fees must be paid to the World Intellectual Property Organization.
Trademark Search in China
Before you file an application for the trademark registration, you need to conduct a basic search for your trademark. Actually, it is an optional step, but you should do this type of search in order that you can check whether your trademark is available or has been previously registered, or identical or confusingly similar to any other registered trademarks. This step will prevent you from wasting time and spending resources on an application which is sure to be rejected and could delay your business operations in China.
Trade mark agents can help you conduct a trade mark search on your behalf but you can do a basic search by yourself on the CTMO online database which records all applied-for and registered trademarks in China. The database is available in English and is free to use.
How is the priority right claimed for trademark registration in China
Priorityrights can be claimed:
- The applicant files an application for the trademark registration in a foreign country;
- Both of China and that foreign country are members of Paris Convention.
To claim a priority right on an existing trademark registered in a foreign country, the applicant must register the same trademark for the same goods or services and indicate the request for priority right in the application in China within six months since the filing date of the original trademark’s application. Then, the filing date of the trademark application in China would be the first application’s date of filing.
If the trademark is bear on goods exhibited at an international exhibition sponsored or recognized by the Chinese government, the applicant may claim a priority right within six months from the date of exhibition of the goods.
Within three months of requesting a priority right, the applicant should submit a copy of the documents with regard to the original application or evidence related to the use of the trademark on the exhibited goods.
Duration of trademark certificate in China
The validity period of a registered trademark is 10 years since the date of registration. The holder may proceed renewing the duration of the trademark certificate within 12 months before the expiry date of the validity period. In case the registrant fails to do so, he may be granted a six-month grace period for renewal. The number of renewal is unlimited and the duration of each renewal is 10 years from the following day of the expiration of the previous period.
FAQ trademark registration in China
How are well-known trademarks protected in China?
The protection of a well-known trademark is divided into 2 types.
a) Unregistered well-known trademarks
The protection to unregistered well-known trademarks is not a cross-class protection.
b) Registered well-known trademarks
Registered well-known trademarks can obtain cross-class protection. They are still protected on the class they have not been registered.
Who can file the trademark application in China?
Both native and non-native applicants can have the rights to file the trademark application in China.
A power of attorney (POA) is required from foreign applicants, but notarization is not necessary. The POA needs filing together with the application.
Is multi-classes application allowed in China?
Yes. Multi-class applications are allowed in China. However, they have some disadvantages for fling the multi-class application.
Firstly, a divisional application is applicable when the national multi-class application is provisionally refused. But for an international registration application designating China, divisional application is impossible even if it is partially refused.
Secondly, if a multi-class application is opposed to some of the applied- for classes, divisional application is impossible. That means, the whole application including the non-opposed classes cannot be registered but have to wait for the result of the opposition on the opposed classes.
Thirdly, if assignment/renewal concerning a registration is needed, the whole multi-class application or registration must be assigned/renewed without division. In such circumstance, it will be problematic if the applicant/registrant would like to just assign or renew part of the classes.
Classification of products or services
Goods and/or services are classified in China follows the general framework of the International Trademark Classification (Nice Classification).
What can the applicant do when a third party participating during the registration procedure by initiating opposition proceedings?
Once a trademark has passed the examination by the trademark’s office, it will be published in the National Gazette. Interested third parties can file an opposition against the trademark has been preliminary approved within 03 months since the date of publication