Nov 01, 2023 (Newsletter Issue 8/23)
Apostille Convention to Enter into Force
On Nov. 7, 2023, the Apostille Convention will come into force in China. China acceded to the Convention Abolishing the Requirement of Legalization for Foreign Public Documents (known as “the Apostille Convention”) on March 8, 2023. So far, there are 125 contracting Parties of the Apostille Convention.
As China’s accession to the Apostille Convention, the once costly and time-consuming legalization process will be much simplified. From Nov. 7, a foreign public document with an Apostille certificate can be used in China without further diplomatic or consular legalization, and vice versa. In view of usual practice, the various notarized documents, e.g. Power of Attorney and proof of identity which are most frequently used in litigation matters of patent and trademark, will be recognized by China’s authorities with simply an Apostille certificate provided. With this option being available, companies and individuals, both domestic and abroad, will surely benefit from its convenience.
China’s competent authorities to issue the Apostille will be Ministry of Foreign Affairs and the Foreign Affairs Offices at provincial and municipal levels.
Source: www.pcassociates.cn
Feb 16, 2023 (Newsletter Issue 3/23)Draft Interpretation of Handling Criminal Cases of Intellectual Property InfringementOn 18 January 2023, the Supreme People’s Court and the Supreme People’s Procuratorate of China released a draft on "Interpretation on Several Issues Concerning the Application of Law in Handling Criminal Cases of Intellectual Property Rights Infringement (Draft for comments)".
The interpretation mainly sets out criteria for determining criminal prosecution, e.g., in cases of serious circumstances of trademark infringement. The public is invited to submit comments until 5 March 2023.
For more information, please click hereSource: www.court.gov.cn; www.chinaiplawupdate.com Jan 26, 2023 (Newsletter Issue 2/23)Draft Amendment to Trademark Law PublishedOn 13 January 2023, the China National Intellectual Property Administration (CNIPA) published the draft amendment to the Trademark Law of the People's Republic of China. This is the fifth revision of the Chinese Trademark Law since 1983. The draft expands the Trademark Law to 10 chapters and 101 articles. Of these, 23 new articles have been added, 6 new articles have been carved out of existing articles, 45 articles have been substantially revised and 27 existing articles have been retained.
Many of the amendments aim to reduce the malicious registration of trademarks and introduce a system to enforce the transfer of maliciously occupied trademarks. In addition, the requirement of good faith in the field of trademarks is to be strengthened. Furthermore, trademark registrants are now required to file statements of use every five years and are subject to random checks.
CNIPA’s notice and the draft can be reviewed here (in Chinese only).
For more information, please see here Source: www.chinaiplawupdate.com Dec 15, 2022 (Newsletter Issue 18/22)Provision on Supervision and Administration of TM AgenciesOn 1 November 2022, the China National Intellectual Property Administration (CNIPA) informs on Order No. 63 of the State Administration for Market Regulation promulgated on 27 October 2022 and effective from 1 December 2022.
The provision contains rules for the registration of trademark agents, a code of conduct, supervision, and punishment. Trademark agencies include service organizations registered to engage in trademark agency business in accordance with the law. Trademark agency registration is valid for three years and shall be renewed every three years if they wish to continue the services.
Trademark agents are prohibited from assisting in the registration, transfer, and misuse of bad faith trademarks. A firm or practitioner who engages in such illegal conduct will be penalized and placed on the official credit system. The firm's or practitioner's licence to practice before CNIPA may be suspended or revoked.
For more information, please click here (in Chinese only) Source: www.gov.uk; www.cnipa.gov.cn Oct 20, 2022 (Newsletter Issue 15/22)Measures to Improve eServices of CNIPAOn 5 September 2022, the China National Intellectual Property Administration (CNIPA) issued a notice to further strengthen digitisation of trademark reviews. CNIPA will fully move all rejection appeal cases online. From 1 November 2022, trademark agencies should submit electronic applications through the online trademark rejection appeal system and no longer file paper applications.
Furthermore, on 20 September 2022, CNIPA published a series of measures to further improve electronic services and facilitate trademark registration. These measures include, for example, optimising the file upload function, formulating and issuing guidelines for making requests and responding to Office notices online, as well as organising a series of training courses to educate trademark representatives how to use the system.
For more information, please click here (in Chinese only) Source: www.gov.uk; www.cnipa.gov.cn; www.beijingeastip.com Oct 06, 2022 (Newsletter Issue 14/22)Guide on Cybercrimes and Trade Secret Protection in EU & ChinaOn 19 September 2022, the European Commission published a guide on cybersecurity and trade secrets protection in the EU and China. The guide provides EU small and medium-sized enterprises (SMEs) with an overview of cybersecurity risks to trade secrets protection, as well as measures SMEs can take against potential cybercrime and remedies in the event of cyber theft of intellectual property.
The guide can be downloaded here Source: www.op.europa.eu Aug 11, 2022 (Newsletter Issue 11/22)Guidelines for IP Protection at ExhibitionsOn July 22, the China National Intellectual Property Administration (CNIPA) published guidelines for improving IP protection at exhibitions and trade fairs. The guidelines allow for setting up a workstation at an exhibition to accept IP infringement complaints, provide judgement opinions, transfer evidence to relevant law enforcement departments, etc. The IP management department of the place where the exhibition is held may, in conjunction with relevant departments, guide the exhibition organizers to set up workstations in accordance with the relevant provisions of the State and actual needs.
If a respondent does not reply to a complaint within 24 hours of receipt, the complaint of infringement is confirmed via valid legal documents, or the respondent admits to the infringement, the exhibition organiser can take actions including removing the exhibitor’s display. These guidelines apply to both online and in-person exhibitions and trade fairs.
For more information, click here (Chinese only).Source: www.gov.uk; www.cnipa.gov.cn Jul 14, 2022 (Newsletter Issue 9/22)Japan-China-Korea Concordance List of Similar Group Codes PublishedTh Japanese Patent Office (JPO) published the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2022 (NCL11-2022).
The Japan Patent Office (JPO), the China Intellectual Property Office (CNIPA), and the Korean Intellectual Property Office (KIPO) have been working to establish a concordance lists showing the corresponding relationships between the respective similar group codes used for trademark examination at the JPO, the CNIPA, and the KIPO, based on a trilateral agreement signed by the three offices.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
For information, please check JPO's website here Source: www.jpo.go.jp Jun 30, 2022 (Newsletter Issue 8/22)Guidelines on Punitive Damages in Civil IP Cases IssuedOn 25 April 2022, the Beijing High People's Court issued Guidelines on the Application of Punitive Damages in the Trial of Intellectual Property Infringement Civil Cases (Guidelines) in order to further harmonise the application of punitive damages in civil IPR infringement cases and strengthen judicial protection of IPR.
The Guidelines are divided into six sections with 51 articles dealing with general issues such as the principles of application of punitive damages and substantive issues in the application of punitive damages, including the legal requirements, the calculation of punitive damages and the relevant provisions for Internet service providers.
In addition, the Guidelines address procedural issues, especially in relation to claiming or modifying punitive damages, as well as the specific requirements for the application of punitive damages in joint litigation and provide information on the scope of application.
For more information, please see here Source: www.dlapiper.com Jun 02, 2022 (Newsletter Issue 7/22)Typical IP Enforcement Cases ReleasedOn 21 April 2022, the State Administration for Market Regulation (SAMR) released typical cases of IP enforcement by Market Supervision Departments.
The 20 cases covered trademark infringement, patent counterfeiting, Olympic logos, malicious trademark registration and the unauthorized practice of patent law, etc.
For more information, please click here
Source: www.chinaiplawupdate.com May 19, 2022 (Newsletter Issue 6/22)Additional Guidance on China’s Accession to Hague SystemChina's accession to the Hague System entered into force on 5 May 2022, as we have previously reported. WIPO now provides guidance for users who wish to designate China in international applications with regard to the Hague System. The following information is available:
- Information on specific views required for three-dimensional designs and graphical user interfaces
- Updated guidance on including multiple designs in an international application
- Updated guidance on preparing and providing reproductions
- Individual designation fees
For more information, please see here Source: www.wipo.int Feb 10, 2022 (Newsletter Issue 2/22)Accession to Hague SystemOn February 5, 2022, the Government of the People’s Republic of China deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement. The Act will enter into force in China on May 5, 2022.
It should be noted that the 1999 Act will not be applied in the Hong Kong Special Administrative Region or the Macao Special Administrative Region of the People’s Republic of China until otherwise notified by the Government of the People’s Republic of China.
China’s instrument of accession includes several declarations which can be seen hereSource: www.wipo.int Dec 16, 2021 (Newsletter Issue 18/21)First Mediation Rules for International IP Disputes ReleasedOn 29 October, the Mediation Center of the China Council for the Promotion of International Trade (CCPIT) released Mediation Rules for Intellectual Property Disputes.
It is the first set of rules in China aimed solely at the resolution of international IP disputes. The rules, comprised of five chapters, seek to align with international mediation principles. Based on the unique nature of IP disputes, the rules allow for technical investigations during the mediation processes.
Experts and institutions can be hired to provide technical consultation for technology-centered cases. Under the rules, parties involved in disputes are able to pick the language of their choice for mediation and even use a combination of alternative dispute resolution methods such as litigation and arbitration to protect their rights.
The rules became effective on November 1, 2021.
For more information, click here (Chinese only).Source: www.gov.uk; www.sbj.cnipa.gov.cn Dec 16, 2021 (Newsletter Issue 18/21)Guidelines for Legal Protection and Enforcement of Chinese Trademarks in EnglishOn November 30, 2021, the China National Intellectual Property Administration (CNIPA) released the Guidelines for the Legal Protection and Enforcement of Chinese Trademarks in English. The UK Intellectual Property Office (UK IP Office) issued corresponding guidelines on UK intellectual property in English and Chinese.
The Guidelines were released to deepen the understanding of the Chinese and British intellectual property systems by enterprises of the two countries.
All Guidelines are available here and the Chinese Guidelines in English hereSource: www.gov.uk; www.cnipa.gov.cn; www.slwip.com Dec 02, 2021 (Newsletter Issue 17/21 )New Guidelines for Trademark Examination and Trial On November 22, 2021, China’s National Intellectual Property Administration (CNIPA) released the Guidelines for Trademark Examination and Trial. They explain Article 4 of the Chinese Trademark Law, which provides criteria for identifying malicious applications.
These new guidelines and other measures, such as the ‘Special Action Plan to Combat Malicious Trademark Squatting’ issued by CNIPA in March 2021, are intended to further reduce trademark squatting in China.
The guidelines come into effect on January 1, 2022.
For more information, please check hereSource: www.slwip.com Dec 02, 2021 (Newsletter Issue 17/21 )New Requirements when Applying for Well-known Trademark Status China’s National Intellectual Property Administration (CNIPA) introduced a new requirement for applying for well-known trademark status from September 1, 2021. Applicants are required to submit a commitment letter in which they provide assurance that there is no malicious conspiracy or other dishonest acts with another party and that there is no other illegal means to defraud the protection of well-known trademarks.
In addition, applicants must also promise that the relevant information and evidence submitted in the opposition/review of opposition/invalidation actions is legitimate, accurate and complete. They must attest that the documents have not been falsified by e.g., forgery, alteration, concealing evidence, or instigating, bribery or coercion to commit perjury.
Further, the commitment letter must be signed by both the applicant and the representing trademark attorney.
For more information on the notice, please click here (Chinese only).Source: www.gov.uk; www.cnipa.gov.cn Nov 18, 2021 (Newsletter Issue 16/21)
Switch to Electronic Trademark Registration Certificates
On October 12, 2021, the China’s National Intellectual Property Administration (CNIPA) announced that trademark registration certificates are no longer be issued from January 1, 2022.
For trademark applications submitted via paper filing, the CNIPA is going to issue a Notice with a URL and QR code where the applicant can download the electronic trademark registration certificate. For the application filed via the e-filing system, the registration certificate can be viewed and downloaded from the CNIPA's online service system.
During the transition period, CNIPA is issuing both paper and electronic registration certificates from October 15, 2021, to December 31, 2021.
Source: www.chinaiplawupdate.com; www.rouse.com
Jun 17, 2021 (Newsletter Issue 12/21)Judicial Interpretations for Punitive DamagesOn March 3, 2021, the Chinese Supreme Court issued the "Supreme Court’s Interpretations on the Application of Punitive Damages in the Trial of Civil Cases of Intellectual Property Infringement" to unify the handling of punitive damages claims brought before all People’s Courts.
The judicial interpretations comprise seven articles that address a number of previously open issues, such as when infringements are "intentional", when an infringement entails "serious circumstances", and how to determine a proper base compensation on which compensation multiples can be applied to calculate an appropriate punitive amount.
In addition, the Supreme Court circulated "Model Cases for Applying Punitive Damages in Civil Cases involving Intellectual Property Rights Infringements" to illustrate the proper handling of punitive damages.
For further information, please see hereSource: www.perkinscoie.com Jun 03, 2021 (Newsletter Issue 11/21)
Inquiry System for EU Trademarks Launched
On April 26, 2021, the Chinese National Intellectual Property Administration (CNIPA) launched a registration-information inquiry system for trademarks registered in the European Union.
The system, called EUTMS, is the first official inquiry system for international trademark information in China and can serve 100 active users simultaneously. The public can search using keywords such as trademark name, application number and applicant to browse and download trademark information.
The system was developed following an agreement on the mutual exchange of trademark information between the CNIPA and the European Union Intellectual Property Office (EUIPO) signed on Sept 25, 2020.
Source: www.ipraction.gov.cn
Mar 25, 2021 (Newsletter Issue 6/21)EU and Chinese Geographical Indications Protectable NowOn March 1, 2021, the EU-China bilateral agreement on protecting geographical indications (GIs) in China and Europe entered into force. The agreement protects around 200 iconic European and Chinese agri-food names against imitation and usurpation, bringing mutual trade benefits and introducing consumers to guaranteed, authentic products from two regions with a rich culinary and cultural tradition.
The EU list of GIs to be protected in China includes iconic GI products such as Cava, Champagne, Feta, Irish Whiskey, Münchener Bier, Ouzo, Polska Wódka, Porto, Prosciutto di Parma and Queso Manchego.
Among the Chinese GI products, the list includes for example Pixian Dou Ban (Pixian Bean Paste), Anji Bai Cha (Anji White Tea), Panjin Da Mi (Panjin rice) and Anqiu Da Jiang (Anqiu Ginger).
In the course of the next four years, the agreement will expand to cover an additional 350 GI names from both sides. These names will have to follow the same approval procedure as the names already covered by the agreement (i.e. assessment and publication for comments).
For more information, please click here Source: www.ec.europa.eu Mar 11, 2021 (Newsletter Issue 5/21)
More IPR Service Centers to Be Established
In 2020, China plans to set up 20 more intellectual property rights (IPR) centers nationwide to offer quicker services and reduce duration and cost of IPR protection.
The IPR protection centers address difficulties in obtaining evidence and reduce processing time and costs involved with IPR disputes, while the fast IPR service centers aim to provide county-level industry clusters quick IPR review, verification and protection.
So far, more than 60 IPR protection centers and fast IPR service centers have been established.
Source: www.afdip.com
Feb 25, 2021 (Newsletter Issue 4/21)Copyright Law AmendedOn November 11, 2020, the latest amendment of the Copyright Law has been passed by the Standing Committee of the National People’s Congress of the PRC. It will come into force on June 1, 2021.
Some significant changes are the following:
- Punitive damages and an increase in statutory damages added
- Term cinematographic work / work similar to cinematography replaced by term audio-visual work
- Right of broadcasting expanded
- Work type definition extended
- Exploitation of a work of co-authorship improved
- Technical measure of right owner protected
For further information, please check the article of our Country Index Partner, the law firm P. C. & Associates here
Source: P. C. & Associates, China Dec 03, 2020 (Newsletter Issue 20/20)Japan-China-Korea Concordance List of Similar Group Codes PublishedOn November 16, 2020, the Japanese Patent Office (JPO) informs about the publication of the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, Version 2020 (NCL(11-2020)).
The compilation of the Concordance List of Similar Group Codes is a cooperative project between the Japanese Patent Office (JPO), the Chinese National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO), indicating the corresponding relationships among the respective similar group codes used for trademark examination at the JPO, the CNIPA and the KIPO.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
The concordance list is available as an Excel table on the JPO website hereSource: www.jpo.go.jp Oct 22, 2020 (Newsletter Issue 17/20)Agreement Protecting EU / Chinese Geographical IndicationsOn September 14, 2020, the EU and China signed a bilateral agreement to protect 100 European Geographical Indications (GIs) in China and 100 Chinese GIs in the European Union against usurpation and imitation. This agreement, first concluded in November 2019, should bring reciprocal trade benefits as well as introducing consumers to guaranteed, quality products on both sides.
For more information, please click hereSource: www.ec.europa.eu Oct 22, 2020 (Newsletter Issue 17/20)
First IP Dispute and Guidance Center Established
On September 7, 2020, the Beijing branch of the National Overseas Intellectual Property Dispute Response and Guidance Center was launched.
As one of the first 10 local sub-centers approved by China's National Intellectual Property Administration (NIPA), Beijing branch will help provide more efficient and convenient services, prevent risk, and give guidance during overseas intellectual property disputes to Chinese companies working in global business.
The national center will provide services online and via a hotline. Meanwhile, each sub-center will cooperate with the national center to establish mechanisms in resource sharing, information submission, coordination, and training.
Source: www.china.org.cn
Aug 06, 2020 (Newsletter Issue 13/20)New Civil Code to Help Protect IPOn May 28, 2020, the Third Session of the 13th National People’s Congress (NPC) voted and passed the “Civil Code of the People’s Republic of China”. This law will come into effect on January 1, 2021. The new code is a codification of civil statutes and comprises 1,260 articles, more than 50 of them related to intellectual property.
The IP spectrum includes copyright works, patented inventions, utility models and industrial designs as well as trademarks, geographical indications, trade secrets, integrated circuit designs, and new plant varieties.
Targeting severe IP infringements is included in Article 1185 and aligns with the newly amended trademark law that provides for increased punitive damages. Article 63 of the trademark law, as amended in November 2019, increased punitive damages from up to treble to up to quintuple assessed damages when infringement is committed in bad faith and the circumstance is serious.
For further information, please click hereSource: www.chinaiplawupdate.com Jul 23, 2020 (Newsletter Issue 12/20)National Plan to Combat IP Infringement ReleasedOn June 5, 2020, the State Administration for Market Regulation (SAMR), which regulates market competition, monopolies, intellectual property, and drug safety, released a national plan to combat intellectual property infringement. The plan is officially entitled “Key Points of the National Work to Crack Down on Intellectual Property Infringement and the Production and Sale of Counterfeit and Inferior Commodities in 2020.” The plan lists 35 points covering trademark, patent, copyright, and trade secret protection. Special emphasis is placed on protecting the intellectual property of foreign-invested enterprises.
The plan specifies the following measures:
1) Deepen governance and product supervision in key areas
2) Strengthen Intellectual Property Protection
3) Severely punish infringement, counterfeiting and other IP crimes
4) Promote the Promulgation of IP Laws & Regulations
5) Promote ‘Social Co-Governance”
6) Deepen foreign exchanges and cooperation
7) Promoting business capacity building
For further information, please click hereSource: www.natlawreview.com; www.slwip.com; www.cnipa.gov.cn Jul 09, 2020 (Newsletter Issue 11/20)Criteria on Determining Trademark Infringement IssuedOn June 15, 2020, the China National Intellectual Property Administration (CNIPA) issued the Judging Criteria for Trademark Infringement (Criteria) to further implement the decisions and arrangements of the State Council on strengthening intellectual property protection, reinforce the PRC Trademark Law and the Implementation Regulations of the Trademark Law related enforcement through guidance, and unify the standards of law enforcement for the local authorities and People’s Courts. The Criteria took effect immediately.
The purpose of issuing the Criteria is to provide guidelines for the enforcement of trademark rights, to harmonise enforcement practice and to improve the protection of trademark exclusive rights.
Key aspects of the Criteria are as follows:
- Use of trademarks
- Identical and similar goods and services
- Identical and similar trademarks
- Likelihood of confusion
- Constitution of trademark infringement
- Seller’s liability exemption
- Other noticeable provisions
For further information, please click hereSource: www.cnipa.gov.cn, www.cms.law Jun 25, 2020 (Newsletter Issue 10/20)Administrative Measures for Use of Special Marks of GIsThe China National Intellectual Property Administration ("CNIPA") has recently enacted and issued the Administrative Measures for Use of Special Marks of Geographical Indications (for Trial Implementation) (the "Measures") which takes effect immediately from the date of issuance.
According to the Measures, four types of subjects, including "producers that have been approved, as stated in public announcements, to use the special marks of geographical indications on their products", are the legal users of special marks of geographical indications.
These legal users shall observe the principle of good faith, fulfil three obligations including "organizing the production of geographical indication products pursuant to relevant standards, management practices and administrative rules for such use".
The Measures prescribe that where a legal user of the special mark of a geographical indication fails to organize production activities in accordance with the corresponding standards, management practices or relevant administrative rules for use, or has not used, within two years, the special mark on the protected geographical indication products, the intellectual property authority shall disqualify it from using the special mark of the geographical indication concerned. In addition, the Measures mandate a transition period till December 31, 2020 for the use of the original special marks of geographical indications, stating that products bearing the original marks that are produced before December 31, 2020 may continue to be circulated in the market.
For more information, please click hereSource: www.watson-band.com Mar 05, 2020 (Newsletter Issue 3/20)Applicants Encouraged to Use E-ServiceCNIPA issued a notice to encourage applicants to use the online service for trademarks, designs and patents of the Office to minimize the risk of the coronavirus pneumonia infection.
With regard to filing of trademarks for registration, applicants may choose from the online services of the Office, which cover services such as filing, changes, renewal and transfer of trademarks. The online service can be accessed hereSource: www.sbj.cnipa.gov.cn Feb 20, 2020 (Newsletter Issue 2/20)Public Notice on IP Rights Affected by Coronavirus OutbreakOn 28 January 2020, the China National Intellectual Property Administration (CNIPA) issued a public notice No 350 in order to issue concerning deadlines of trademarks, patents, designs affected by the Coronavirus outbreak.
With regard to trademarks the notice stipulates, that the time limit established by the Trademark Law and its Implementing Rules or specified by the CNIPA due to the epidemic and related reasons, shall be suspended from the date when the obstacles to the exercise of rights arise, and shall continue to be counted until the obstacles to the exercise of rights are removed, unless otherwise provided by law.
If a party was unable to comply with a time limit due to the Coronavirus outbreak, the party may apply in writing within 2 months from the date of elimination of the obstacles to exercise his rights, explain the reasons, provide the corresponding supporting materials, and request the restoration of the rights.
For more information, please check the notice hereSource: www.afdip.com Feb 20, 2020 (Newsletter Issue 2/20)Opposition Decisions Published by CTMOOn 18 February 2020, the China Trademark Office (CTMO) of the China National IP Administration (CNIPA) announced that the CTMO has decided to publish trademark opposition decisions online as of 1 January 2020. This measurement has been taken in order to strengthen the transparency of opposition examination, to enhance public supervision, and to promote legal administration.
A decision shall be published at its official website http://sbj.cnipa.gov.cn/ within 20 days after the decision is mailed with the following exceptions:
1. a decision is related to a party’s trade secret or personal privacy;
2. a party requested for non-disclosure and the CTMO considered the request reasonable; or
3. other special scenarios where the CTMO considers inappropriate.
The published decisions are for the inquirers’ reference only and carry no legal effect. Any damage caused by the illegal use of the information will be covered by the illegal users.
Source: CHOFN Intellectual Property, China Dec 05, 2019 (Newsletter Issue 17/19)
New Official Seal for GIs
On October 16, 2019, the China National Intellectual Property Administration (CNIPA) released an official seal for geographical indications (GIs).
CNIPA is the competent Office for registering GIs and rendering official protection. Regulations governing the new seal will be released by the Office.
The current seal is still valid before the new one is used officially, and the transitional period will last until December 31, 2020.
Source: www.sbj.cnipa.gov.cn
Dec 05, 2019 (Newsletter Issue 17/19)
Rules on Regulating Trademark Filing Acts in Force
The State Administration for Market Regulation (SAMR) announced the enactment of the 'Rules on Regulating Trademark Filing Acts (Rules)', which was released in form of a SAMR Decree No. 17 and came in force from December 1, 2019. The Rules implement the amendment of the Trademark Law, effective since November 1, 2019.
The 19 specific provisions in the new Rules aim to regulate trademark filing acts from four aspects:
1.) Set up a centralized provision on trademark filing and registration acts violating the principle of good faith that used to be peppered in multiple articles of the Law and the newly-added ones summed up from practice; provide specific guidelines for representation services of trademark firms; monitor during the whole filing procedure, sanction malicious trademark filing acts at every process and every stage of trademark examination and adjudication.
2.) List the factors taken into consideration for examining malicious trademark filing acts and illegal representation acts; elevate operability and transparency of trademark examination.
3.) Sanction malicious trademark filing acts and illegal representation acts; set up a fine treble of illegal gains of the malicious trademark applicant and no more than 30,000 yuan; set up a maximum 100,000 yuan fine on trademark firms aiding malicious trademark filing and suspension of services if offense is deemed aggravated.
4.) Streamline trademark filing routes and procedures and make the system easier to use for applicants; elevate administration services.
Source: www.sbj.cnipa.gov.cn
Nov 19, 2019 (Newsletter Issue 16/19)Amended Trademark Law in ForceThe Standing Committee of the National People's Congress announced the amendments to the Trademark Law on April 23, 2019. The fourth amendment to the Trademark Law entered into force on November 1, 2019.
The revisions intend to create an environment with better legal certainty and to avoid unfair competition. The amendment aims at combating bad faith applications by creating new grounds for challenge at all stages of criminal proceedings.
The State Administration for Market Regulation issued provisions on the Regulation of Trademark Application and Registration Behavior to facilitate the implementation of the amendments which will take effect from December 1, 2019.
For more information, please click hereSource: www.bakermckenzie.com Sep 05, 2019 (Newsletter Issue 12/19)Guidelines on Administrative Trademark Cases PublishedOn April 24, 2019, the Beijing High Court published a new set of Guidelines for the hearing of administrative cases concerning trademark prosecution. This time, the document is much more extensive with 162 articles. The Guidelines are divided into two parts: procedural issues and substantive matters.
For more information, please click hereSource: www.wanhuida.com Aug 22, 2019 (Newsletter Issue 11/19)
Progress in Electronic Communication of Madrid Trademark Registration
According to the Trademark Office (TMO) of China National Intellectual Property Administration (CNIPA), China's self-developed electronic document-sending system for the post-registration formalities of the Madrid Trademark International Registrations is now comfortably transmitting during its first-month operation, having successfully delivered 124 documents to the World Intellectual Property Organization (WIPO) as of now. The IT system is another key milestone in electronic communication between China and the Madrid system since the online debut of the Madrid filing system on June 21, 2018.
Source: www.english.sipo.gov.cn
Jul 11, 2019 (Newsletter Issue 9/19)Renewal Fees Reduced On June 19, 2019, the China Trademark Office of CNIPA announced, that the official trademark renewal fees have been reduced. The changes became effective as of July 1, 2019.
The official fee for filing a trademark renewal application is now CNY 500. The official fee for application for recordal of change per class is reduced to CNY 150, and is nil if it is filed via electronic means and electonic issuing of documents is available.
Source: P. C. & Associates, China Jun 06, 2019 (Newsletter Issue 7/19)Trademark Law AmendedOn April 23, 2019, the Standing Committee of the National People's Congress, China's top legislature, approved revisions to eight laws, including the Trademark Law which will come into on November 1, 2019.
The amendment aims at combating bad faith application without actual intention to use, strengthening punishments on trademark infringement and raising the statutory damage from maximum 3 million yuan to maximum 5 million, curbing the number of bad faith applications or litigations by giving more responsibilities to Chinese trademark agencies, etc.
Traditionally, the pirated trademarks can be opposed when they are preliminarily approved and published and can be invalidated when they are registered. However, such procedures are slower and more costly for the opposition or invalidation applicants. The amended law gives the examiner more legal bases to combat bad faith bulk applications without intention to use in the early stage of examination so that the bad faith applications can be restricted more effectively and economically.
For further information, please check the article of our Country Index Gold partner P. C. & Associates, China here
Source: P. C. & Associates, China Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationChina has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Nov 30, 2018 (Newsletter Issue 20/18)Madrid E-Filing Available NowThe Trademark Office of China National Intellectual Property Administration (CNIPA) provides online filing services for international applications (Madrid).
The e-filing is available via CNIPA's website hereSource: www.wipo.int; www.saic.gov.cn Mar 29, 2018 (Newsletter Issue 6/18)SIPO Takes Over Administration and Enforcement of TrademarksOn March 17, 2018, National People’s Congress (NPC) approved the proposal made by the State Council, China’s chief administrative authority, to restructure the administrative organs under the State Council.
The following restructuring is for example planned:
- The State Intellectual Property Office (SIPO) will take over examination and registration of trademarks from the China Trademark Office (CTMO) and the Trademark Review and Adjudicative Board (TRAB).
- SIPO will also take over registration and administration of geographic indicators from the General Administration of Quality Supervision, Inspection and Quarantine.
- SIPO will have additional responsibility to guide the enforcement of trademarks and patents but will not handle such enforcement on a daily basis.
- SIPO will be subordinate to a new State Administration for Market Supervision (SAMS). SAMS will have broad power including but not limited to enforcement of patents and trademarks. Hence SAMS’s enforcement teams will be in charge of trademark and patent enforcement with guidance from SIPO.
One purpose for the above restructuring is to consolidate government resources in administering and enforcing IPRs and to make the administration more efficient. It is not known how long the restructuring will take to complete. There are open issues about the new structure. For example, it is not clear whether SIPO will take over the administration and/or enforcement of copyright from the National Copyright Administration.
For more information, please see hereSource: www.hoganlovells.com Mar 15, 2018 (Newsletter Issue 5/18)Further IP Tribunal EstablishedOn March 1, 2018, Changsha Intellectual Property Tribunal was established in Changsha, capital of Hunan Province.
With its establishment, China now possesses a total of three Intellectual Property Courts (in Beijing, Guangzhou and Shanghai) and 15 Intellectual Property Tribunals (in Tianjin, Chengdu, Shenzhen, Wuhan, Nanjing, Hangzhou, Suzhou, Hefei, Ningbo, Fuzhou, Jinan, Qingdao, Xi’an, Zhengzhou and Changsha).
Changsha Intellectual will have jurisdiction over the following intellectual property cases:
1. First instance IP civil cases or administrative cases related to patents, new plant varieties, layout-designs of integrated circuits, technical secrets, computer software, determination of well-known trademarks and monopoly disputes that take place in Human Province;
2. First instance IP civil cases or administrative cases related to trademarks, copyrights, unfair com-petitions, technical contract disputes that take place in Changsha city.
3. Cases of appeals against the decision of first instance IP criminal cases made by the basic-level people’s court in Changsha city.
Source: CHOFN Intellectual Property, China
Jan 30, 2018 (Newsletter Issue 2/18)Anti-Unfair Competition Law AmendedOn November 4, 2017, the 30th Meeting of the Standing Committee of the Twelfth National People’s Congress of the People’s Republic of China passed an amendment to the Anti-Unfair Competition Law of the People’s Republic of China (“Anti-Unfair Competition Law”), which came into effect on January 1, 2018.
This is the first major amendment to the Anti-Unfair Competition Law since its implementation in 1993, and it will have a significant impact on businesses in China.
The amendment provides greater clarity about judging principles on an unfair competition activity and emphasizes the need to protect the public interest, as well as the interests of businesses and consumers.
With respect to trademarks the Law alters Article 5 to remove duplication with the Trademark Law by deleting the reference to “feigning of others’ registered trademarks” in Article 5(1). Consistently, the amendment also removes Article 5(4), which prohibited making misleading or deceptive representations about the origin or quality of goods, and the use of false documentation (e.g. certificates of attestation, qualification, quality or origin) to mislead others.
The amendment also expands the definition of ‘protected commercial marks’ to include the name, packaging, domain name, and website name used for a particular product. The expanded scope of this definition will facilitate greater effectiveness in regulating anti-competitive conduct online.
For further information, please check hereSource: King & Wood Mallesons, China Jan 16, 2018 (Newsletter Issue 1/18)Beijing IP Court Decides on First Ever GUI Design Infringement CaseOn 25th Dec., Beijing IP court has made a decision on the first ever Graphic User Interface (GUI) design infringement case in China. To the disappointments of many, it has proven to be a temporarily significant blow to the protection of GUI design patents.
As partial design is not allowed in China, GUI design has to be filed together with a product, e.g. as "A Computer with GUI" in this case. However, the accused infringer's product is a software. Unfortunately, the court decided that "computer" and software are different classes of products, hence there was no infringement.
The decision would mean that for thousands of granted GUI design patents in China, their scope of protection could be limited by their hardware carrier (e.g. a computer or a mobile phone). However, it's possible that the appeal decision will overturn this case. Especially, partial design is due to be allowed in China in the next amendment.
This means that GUI designs will be protected independently in the future, it's only a matter of time.
For further information, please read the article of our Gold Country Index Partner Chofn Intellectual Property here
Source: Chofn Intellectual Property, Beijing, China Jul 25, 2017 (Newsletter Issue 14/17)
New Trademark Review Hearing System Launched
The Trademark Review and Adjudication Board (TRAB) decides on review procedures filed against decisions by the Trademark Office. Up to date, these TRAB review procedures were strictly written procedures.
Recently the China State Administration for Industry & Commerce (SAIC) has issued its Rules on TRAB Hearings in Trademark Review Cases, which came into effect on the date of their publication, May 4, 2017.
Even though the possibility of holding a hearing was written into the existing legislation, hearings were in practice never held. It is hoped that this new possibility to request a hearing will be beneficial for the Chinese trademark practice.
Source: Hogan Lovells, Hong Kong/China
Jul 11, 2017 (Newsletter Issue 13/17)Provisions on Trademark Judicial Interpretation in ForceThe Supreme People's Court (SPC) adopted the "Provisions on Several Issues Concerning the hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights" which became effective on March 1, 2017. This long-awaited Provisions concern the revised trademark law.
The Provisions bring useful guidance for the Beijing IP Court (1st instance) and the Beijing High Court (2nd instance), in relation to appeals filed against decisions of the Trademark Review and Adjudication Board (TRAB).
The 31 articles of these Provisions address a variety of situations, the main ones being related to “absolute grounds” of refusal, “relative grounds” of refusal, “bad faith” applications, other prior rights (copyright, name right etc.), the “use” of a trademark, and several procedural issues.
For further information please check the article of Wan Hui Da Law Firm here
Source: Wan Hui Da Law Firm, China Apr 12, 2017 (Newsletter Issue 7/17)Official Trademark Fees Cut by HalfOn March 30, 2017, the Chinese Trademark Office announced its cut of the official fees by half, effective as of April 1, 2017.
The official fee for filing a trademark application is now RMB 300 for up to 10 goods/services in one class, and RMB 30 for each additional class.
Source: CHOFN Intellectual Property, China Feb 01, 2017 (Newsletter Issue 3/17)
Form Requirements Changed
The Trademark Office of the State Administration of Industry and Commerce recently published its announcement on the 'Cancellation of Form Applications for the Issuance of Registration Certificates for Domestically Registered Trademarks' on its website.
The Trademark Office will cancel the former requirements for the form “Application Form for Issuance of Trademark Registration Certificate.” A Certificate of Domestic Registered Trademark (i.e. a trademark that the applicant applies for with the Trademark Office that is approved for registration) will be issued through archival inquiry by stamping “Special Seal for Trademark Registration Certificate” on the trademark archives as proof of trademark registration. When requesting a Certificate of Domestically Registered Trademark, the applicant is required to submit a personal identification document and a trademark registration number. There will be no fee for a Certificate of Domestically Registered Trademark that is issued through archival inquiry. The announcement came into force on January 1, 2017.
Source: Watson & Band Law Offices, China
Jan 11, 2017 (Newsletter Issue 1/17)
Beijing IP Court Establishes Speedy Trial Panel
The Beijing IP Court recently established an internal Speedy Trial Panel for administrative litigation cases concerning the review of trademark application refusals. The panel will set the date for the court hearing and serve parties with subpoenas on the day on which the case is filed.
Trademark applicants can now apply to the court for a summary procedure, which will halve their legal fees and allow them to adduce evidence at the court hearing, instead of within a specific time limit. Further, applicants can brief the court about other relevant cases, such as:
- cases in which applied-for or cited trademarks have been tried;
- other cases of similar circumstances that could justify a consolidated court trial; or
- other cases whose application of law could serve as a reference.
The court will issue its judgment in cases tried via the summary procedure within 45 days. The summary procedure will:
- greatly improve the court's trial efficiency;
- allow judges to gain a full understanding of a case's background; and
- be more convenient for involved parties.
Source: Wan Hui Da Law Firm & Intellectual Property Agency, China
Sep 13, 2016 (Newsletter Issue 16/16)
First Sound Trademark Registered
In China the first sound trademark was registered on May 14, 2016, in class 35, 38, 41 and 42 under No. 14503615, by China Radio International.
A sound mark can acquire distinctiveness only through long-term use. In the examination process, the Trademark Office can issue office action requesting the applicant to submit evidence of use and explain how the trademark acquired distinctness.
In order to effectively protect the trademark rights and prevent the difficulty of proof when others apply to cancel the trademark due to non-use of three consecutive years, the trademark owner should pay attention to keeping evidence of use during daily operation. For example, if the trademark is used in a television advertisement, the contract and invoice for producing and publishing, the evidence of broadcasting shall be kept. If the trademark is used in an online medium, the use evidences is advised to be notarized.
Source: DEQI Intellectual Property Law Corporation, China
Jul 25, 2016 (Newsletter Issue 14/16)
Pledge Applications Received by Local AICs
The State Administrations of Industry and Commerce (SAIC) made an announcement that, after July 1, 2016, 25 local Administrations of Industry and Commerce (AICs) may receive pledge applications of trademark rights on behalf of China Trademark Office. Applications filed through the local AICs are free of charge.
According to the announcement, the local AICs may receive the application documents, prepare a list of applications, forward the application documents to China Trademark Office for examination, and deliver the pledge registration certificates to applicants. The 25 local AICs who are authorized to receive pledge applications include AICs in Zhejiang, Anhui, Guangdong, Guizhou, Shaanxi, Gansu, Xinjiang, Heilongjiang, Liaoning, Hebei, Shanxi, Neimenggu, Jilin, Shanghai, Fujian, Jiangxi, Shandong, Henan, Hubei, Hunan, Guangxi, Chongqing, Sichuan and Yunnan provinces. This new measure is aimed to further streamline administration, delegate power to lower levels, and bring convenience to the applicants.
It may be important to check whether the trademarks have been pledged when acquiring/assigning trademarks in China.
Source: www.lexfieldlaw.com
Oct 28, 2015 (Newsletter Issue 16/15)Official Filing Fees DecreasedOn October 9, 2015, the China Trademark Office announced that as from October 15, 2015, the official fees for filing a national application per mark per class will be CNY 600 lowered from current CNY 800 if the designated goods or services are within the basic ten, and each additional item in excess of the basic then will incur official fee of CNY 60 lowered from current CNY 80.
Source: Peksung Intellectual Property Ltd., China Nov 25, 2014 (Newsletter Issue 18/14)
Specialised IP Court Starts Operation
China has launched its first specialised court for adjudication of intellectual property-related matters - the Beijing Intellectual Property Court (BIPC). With BIPC's commencement of operations on 6 November 2014, the intermediate courts of the Beijing municipality no longer accept any IP-related civil and administrative cases.
However, for a case, as of 5 November 2014, which has been filed with an intermediate court in Beijing but has not yet been concluded, or whose filing is pending after relevant materials have been submitted to an intermediate court in Beijing, it will continue to be handled by the respective intermediate court.
Beijing's history of hearing IP cases dates back to 1993 when the country's first IP tribunal was set up within Beijing First Intermediate People's Court. By now all of the three intermediate courts in Beijing have their respective IP tribunals.
The establishment of BIPC was in accordance with a decision promulgated by the Standing Committee of the National People's Congress of China on 31 August 2014. Two IP courts are expected to open, one in Shanghai and the other in Guangzhou, by the end of this year.
Source: China Patent Agent (HK) Ltd, China
Nov 25, 2014 (Newsletter Issue 18/14)Draft Provisions on Trail of Administrative Trademark-Related CasesOn 15 October 2014, the Supreme Court of PRC published "Provisions of the Supreme Court of PRC on several issues concerning the trial of administrative cases about granting and determination of trademark right (draft for comments)" for one month long public comments.
There has been a substantial increase in the number of this type of cases. In order to clarify and unify the hearing standard, the Supreme Court of PRC, on the basis of deep research and seeking advice from other sources, made the Draft.
For further information, please see the article from our Country Index Gold Partner Peksung here.
Source: Peksung Intellectual Property Ltd., China Sep 16, 2014 (Newsletter Issue 14/14)New Regulations on Well-Known TrademarksOn 3 July 2014, the State Administration for Industry and Commerce (SAIC) published the revised Regulations on Recognition and Protection of Well-Known Trademarks (the Regulations) which replaces the 2003 regulations. It became effective from 2 August 2014.
Article 14 of the new China Trademark Law stipulates the factors to be considered in affirming well-known status of a mark, and it also provides clarification on the venues for asserting well-known mark rights, including China Trademark Office (CTMO), China Trademark Review and Adjudication Board (TRAB), and the relevant courts designated by the Supreme Court of the People's Republic of China.
The Regulations are interpreted in respect of administrative recognition made by the CTMO and the TRAB, under the SAIC. Some important contents are the definition of the well-known trademarks, the venues for administrative recognition of well-known status of a mark, applicable principle as well as clarifications concerning acceptable evidentiary materials.
For further information, please see the article on 'New regulations on recognition and protection of well-known trademarks' from our Gold partner Peksung here.
Source: Peksung Intellectual Property Ltd., China
Sep 02, 2014 (Newsletter Issue 13/14)Notice on Division of ApplicationOn 20 August 2014, the Chinese Trademark Office (CTMO) issued a notice on how a division of application is implemented, when the CTMO has rejected a trademark application in respect of partial designated goods. The notice informs about the following:
- The CTMO will attach a form of Division of Application when it issues Notification of Partial Rejection of Application.
- If the applicant requires a division, the executed Division of Application must be submitted to the CTMO within 15 days of the receipt of the CTMO’s Notification of Partial Rejection of Application. If it is not submitted within the prescribed period, the applicant is deemed to disagree with the division.
- After the division, the application with the provisionally approved items will generate a new application to be published with a new filing number but reserved original filing date; and the original filing number will be reserved for the application in respect of the blocked items due to the partial rejection, for the purpose of appeal proceeding before China Trademark Review and Adjudication Board (TRAB) or other subsequent proceedings.
- Each application for registration can be divided once only in the proceeding of rejection in respect of partial designated goods or services. Division is not applicable in other proceedings.
- There is no official fee for division of application.
- Once filed, the divisional application is irrevocable.
For further information, please see the article on 'CTMO Published Notes on Division of Application' from our Gold partner Peksung here.
Source: Peksung Intellectual Property Ltd., China Sep 17, 2013 (Newsletter Issue 13/13)Amendments to Trademark Law AdoptedOn 30 August 2013, the Standing Committee of the National People's Congress (NPC) concluded its session, adopting the third amendment to the Trademark Law. The new amendment will become effective as of 1 May 2014.
Some of the most notable amendments are below:
- Application for registration of sound permissible
- Introduction of multi-class applications
- Definite timeframe for trademark examination
- Application for renewal can be made within 12 months before expiration date
- Licenses only enforceable against bona fide third parties upon recordal
- Simplified opposition procedures
For further information on the amendments, please also check the article of Xiang Gao, Peksung Intellectual Property Ltd. here
Source: www.npc.gov.cn and Peksung Intellectual Property Ltd., China May 17, 2013 (Newsletter Issue 7/13)Third Revision of PRC Trademark Law Chinese legislators are preparing for the third revision of the PRC Trademark Law. The current PRC Trademark Law was promulgated on 23 August 1992 and was revised in 1993 and 2001 respectively. However, the third revision aims to simplify the registration process, strengthen the protection of trademark rights and improve the enforcement against trademark infringement. The latest draft of the third revision of the PRC Trademark Law (“Draft Revision”) has been released by the Chinese legislators for public comments in January 2013.
The most notable amendments contained in the Draft Revision are below:
- Expansion of Non-traditional Trademark Registration
- Simplified Registration Requirements and Procedure
- Material Change in Opposition Procedure
- The Conflict of Trademark and Trade Name
- A More Trademark Owner Friendly Burden of Proof System
The Draft Revision will still be subject to two or three more readings before it is adopted by the Chinese legislators.
For more information, please check the article of King & Wood Mallesons here
Source: King & Wood Mallesons, China Apr 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
Xicheng District
100055 Beijing
China
Tel +86 10 68 02 78 20
Fax +86 10 68 01 36 23
www.ctmo.gov.cn
Please note that the new address has not been updated on the CTMOs website www.ctmo.gov.cn.
Source: CHOFN Intellectual Property, China Mar 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
Mar 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 Sep 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. Jun 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.
For more information please click here The legal basis is the Trademark Law, in force since March 1, 1983, first amendment on February 22, 1993, second amendment on October 27, 2001, third amendment on August 30, 2014, and fourth amendment on April 23, 2019.
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 recognized as a well-known (c.f., Article 13 of the Trademark Law) or influential (c.f., Article 32 of the Trademark Law) mark in China.
Even after the return of Hong Kong to China, there is separate trademark law in Hong Kong („Trademarks Ordinance“). IP rights registered in China will not be automatically protected in Hong Kong and vice versa. The same applies to Macau.
Registrable as a trademark are any signs capable of distinguishing the goods or services of one party from those of others, including characters, letters, devices, numbers, three-dimensional symbols, combinations of colors, sounds, and any combination of the mentioned signs. Retail and wholesale services are still not acceptable in trademark practice in China, except those for pharmaceutical, veterinary, and sanitary preparations and medical supplies. Therefore, international trademarks for such designated services will be rejected by the Trademark Office and there is no opportunity for the applicant to win the appeal for the rejection if the applicant wants to maintain retail and wholesale services. However, it is possible to file an appeal against the rejection with a request for amendment of retail and wholesale services to be other acceptable items having a similar concept and meanwhile file an application to WIPO to ask for limitation of the original specification applicable in extension to China with retail and wholesale services replaced by the other acceptable items having a similar concept.
The following trademark types are registrable: trademarks, service marks, collective marks, and certification marks. China follows the first-to-file system.
The application is filed before the Trademark Office of the National Intellectual Property Administration, PRC (CNIPA).
Multiple-class applications are possible but single-class applications are often recommended.
Generally, foreign applicants need an officially recognized agent. An applicant as a legal entity must provide a copy of Certificate of Incorporation or the like, and an applicant as a natural person must provide a copy of his or her Identity Card or passport.
A scanned copy of 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.
The procedure for trademark registration includes the following periods: formality check, issuing filing receipt, substantive examination on absolute grounds and relative grounds, being preliminarily approved and published, opposition, and being approved for registration.
Signs not deemed distinctive in the examination may encounter rejections but can be approved for registration by way of rejection appeals if evidence proving distinctiveness acquired by use is acknowledged.
The processing time from first filing to registration is approx. 9 months if it goes smoothly. An official filing receipt will be available in about 1 to 2 months from the filing date after the application goes through the formality check, and then substantive examination may last about 6 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 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 1 month thereafter.
Trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
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More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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