04-02-2013 (Newsletter Issue 4/13)Trademark Office RelocatedThe Chinese Trademark Office moved to a new building. Its current address is:
State Administration for Industry and Commerce Trademark Office (CTMO)
1, Chama South Street
Tel +86 10 68 02 78 20
Fax +86 10 68 01 36 23
Please note that the new address has not been updated on the CTMOs website www.ctmo.gov.cn.
Source: CHOFN Intellectual Property, China
03-27-2012 (Newsletter Issue 5/12)
Requirement for Search Request
The Trademark Office issued a notification of requirement on the search criteria in terms of the reproduction of the device mark. In a search request 10 or less than 10 items of goods/service, identification of sub-classes and cross-class notes should be clearly filled out. The Trademark Office will not accept a search request in which only a class number or all class is indicated.
Source: Hanhow Intellectual Property Partners, China
03-01-2011 (Newsletter Issue 4/11)Cross-Strait (Taiwan & China) IPR Agreement Since November 22nd, 2010, the trademark authorities of China and Taiwan have accepted trademark applications claiming priority based on a corresponding application filed on the other side of the Taiwan strait.
For further information please click here
Source: AFD China Intellectual Property, Beijing, China
09-02-2010 (Newsletter Issue 14/10)Guidelines on Trademarking a State NameThe Chinese Trademark Office announced new guidelines on examination of trademarks comprising "中國" (China) or using the prefix "國" (State) ("Guidelines"). The Guidelines, effective from July 28th, 2010, serve to standardise examination practice of trade marks bearing reference to "中國" (China) or "國" (State).
The four conditions should be met simultaneously:
- The establishment of the applicant must be approved by the State Council of PRC or its authorized organizations;
- The applied-for mark should be consistent with the applicant’s corporate name or its abbreviation. The abbreviation should be approved by the State Council of PRC or its authorized organizations;
- The applied-for mark and the applicant have a closely corresponding relationship; and
- The specified goods or services under the applied-for mark should be consistent with the applicant’s business scope approved by the State Council of PRC or its authorized organizations
For more information please click here or contact our partner Peksung Intellectual Property Ltd.
06-04-2010 (Newsletter Issue 11/10)Trademark Examination Cycle ShortenedDirector of State Administration for Industry and Commerce, Zhou Bohua, disclosed that China has reversed the passive situation of backlog of trademark examination after two years' efforts. The examination cycle will gradually move toward normalization in 2010 and can be shortened to one year in the end of the year.
One of the reasons for the backlog is the large volume of the trademark applications. China's trademark applications rank the first in the world for seven consecutive years since 2002. As of June 30, 2009 , China's total applications for trademark registration have reached 6.77 million, while effective registered trademarks reached 2.4 million.
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Legal basis is the Trademark Law, in force since August 23rd, 1982, last amended December 1st, 2001. China is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. However, the existing trademark law protects unregistered trademarks if the mark is recognised as a well-known mark in China.
Nice classification, 10th edition
Special Chinese goods and services are included.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numerals, devices, combinations or shades of colours, threedimensional forms and any combination of the mentioned signs. Retail and wholesale services are still not acceptable in trademark practice in China. Therefore, international trademarks for such designated services will be rejected by the Trademark Office and there is no opportunity for the applicant to amend the specification or win the appeal for the rejection.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks. China follows the first-to-file system.
The application is filed before the Trademark Office.
A separate application has to be filed for each class.
Foreign applicants need a local agent. Foreign applicants can only file through an officially recognised agent.
Chinese applicant as a legal entity must provide a Certificate of Incorporation or Business License, but foreign applicant as a legal entity does not need to provide such a proof. Foreign applicant as a natural person must provide a copy of his or her Identity Card including its nationality or passport.
A simply signed or stamped power of attorney is necessary.
Foreign applicants do not need a domestic registration.
A Chinese application may claim the priority of a prior foreign trademark application within six months from the filing date of the prior foreign application. A certified copy of the prior trademark application documents must be filed within three months from the Chinese filing date.
After receipt of the application for trademark registration, the procedures for trademark registration includes the following periods: formality check, substantive examination, being preliminarily approved and published, opposition and being approved for registration.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration or first office action is approx. 15 months if it goes smoothly. An official filing receipt will be available in about 1 month as from the filing date if the application goes through the formality check, and then substantive examination may last about 9 months. If the Trademark Office does not object to the application or its office actions (the first could be issued in approx. 4 to 6 months as from the filing date) are overcome, the trademark will be published in the Trademark Gazette for opposition for 3 months. If no opposition is filed against the trademark during the publication period, or if the opposition fails, the Trademark Office publishes the registration in the Trademark Gazette and issues the registration certificate in about 2 months thereafter.
The opposition period is 3 months from publication of the trademark application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
The opposition period is 3 months, beginning from the first day of the month after the publication of the WIPO Gazette.
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
If the trademark has not been used within 3 years from registration, or has later not been used for a continuous period of at least 3 years, it may be subject to cancellation. Additionally, the registrant is required to use the trademark in the same form as that in its certificate.
The basic official fee is about CNY 1,000.00 (approx. EUR 110.00) for up to 10 goods/services in one class, and CNY 100.00 (approx. EUR 11.00) for each additional goods/services in one class.
Trademark Licence Agreement
In China a licence agreement has to be in writing. Licensing of unregistered marks is not permitted. The proprietor may restrict the licence to only some of the goods or services covered by the trademark. Whether the sale of a registered trademark automatically terminates the licence or not depends on the terms of the agreement. According to Chinese Law, the licensor shall supervise the quality of the licensed goods, while the licensee shall guarantee the quality of the licensed goods. The name of the licensee and the origin of the goods must be indicated on the licensed goods.
Recordal is not mandatory, but a licence is only enforceable against bona fide third parties upon its recordal with the Trademark Office. The application for recordal shall be made within three months from the execution of the contract. There is no prescribed form for a licence agreement but it should contain particulars such as the licensed trademark including its registration number, the scope of licensed goods or services, the duration of the licence as well as provisions regarding quality and supervision.
The following documents are required for a recordal:
1. An original recordal form for the trademark licensing contract executed by the licensor
2. An original licence contract executed by both the licensor and the licensee or a notarised copy thereof
3. A photocopy of the registration certificate of the licensed trademark
4. Copies of the certificates of incorporation respectively of the identity cards, passports or drivers’ licences or similar official documents issued by relevant authorities, stamped and signed. The stamps and/or the signatures must be identical with those on the power of attorney.
5. An original power of attorney executed by the licensor if a trademark agent is involved
The licence will be effective after the execution date of the agreement. However, it is enforceable against bona fide third parties only after the approval of the recordal has been issued by the Chinese Trademark Office. The recordal is published in the Trademark Gazette in the second volume of the month.
According to the Interpretation of the Supreme People’s Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks, when trademark infringement occurs, the exclusive licensee can initiate a lawsuit for infringement and the licensee or the licensor in an exclusive licence can jointly initiate a lawsuit to the court. The licensee in a non-exclusive licence can initiate a lawsuit to the court only if he is explicitly authorised by the licensor to do so.
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We would like to thank the following law firms for their assistance in updating the information provided:
03-14-2013CHOFN Intellectual Property
, Beijing, China
, Shanghai, China
AFD China Intellectual Property, Beijing, ChinaPeksung Intellectual Property Ltd.
, Beijing, China Licensing
03-15-2013CHOFN Intellectual Property
, Beijing, China
, Shanghai, China
AFD China Intellectual Property, Beijing, ChinaCHOFN Intellectual Property
, Beijing, China Peksung Intellectual Property Ltd.
, Beijing, China