TRADEMARKS FILING AND PROSECUTION IN CHINA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in China may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. The CNIPA formulates the examination policies and criteria for judging the confirmation of authorization rights of trademarks and also organizes implementation of applications, acceptance and authorization, etc.
|Relevant office||China National Intellectual Property Administration (CNIPA)|
|Nice classification||Yes (11th edition)|
|Multi class system||Yes|
|Documents required for filing trade mark application||Signed Power of Attorney, List of goods and services, representation of the mark, applicant’s detail|
|Prosecution process||Filing publication of the mark in the trade mark journal opposition(within 3 months from the date of publication) registration renewal|
|Registration term||10 years from the date of registration|
|Renewal term||10 years|
Trademark searches in China
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in China can be conducted for word marks, device marks, numeral and labels. An official search can be conducted through an official website of China National Intellectual Property Administration. There are two options available on the official website, first one is Trademark similarity search (users can search whether there are identical or similar trademarks on the same or similar goods and second one is trademark status inquiry (users can inquire about the status of the relevant trademark in the business process through trademark application number or registration number).
Trademark word search edition of China follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in China to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in China. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in China can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark applications in China
A person may file multi-class or single class trademark application in China.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary applications in China:
Ordinary trademark applications filed in China are applications without claiming any priority. Ordinary applications can be filed online through an official website of China National Intellectual Property Administration or the application can be filed at the acceptance hall of the trademark office. Multi class trademark applications may also be filed in China. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in China/Convention trademark applications China:
A priority trademark application may be filed in China. A priority trademark application should be filed in China within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in China within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
China follows the nice classification of classes. China National Intellectual Property Administration uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark examination in China
When an application for the registration is applied it goes through the examination stage. The trademark office shall examine the application whether it has met all the legal requirements of the registration or not.
If the application for the registration is refused, the trademark office will notify the applicant regarding the same in writing. In case applicant is not satisfied with decision he can file the application within fifteen days from the receipt of the notification with the trademark review and adjudication board for a review and the trademark review and adjudication board will notify the applicant about the decision in writing. If the applicant is not satisfied with the decision of the trademark review and adjudication board he can further institute legal proceedings in the people’s court within thirty days from the receipt of the notification.
Trademark opposition in China
If an application for the registration has successfully completed the examination stage it is then accepted and published for the observation by the third parties. Any interested party within three months from the date of the publication may file notice of opposition.
The trademark office in this case will hear the applicant and opponent stated facts and grounds and after all the verification and confirmations, the office will give its decision. If any party is not satisfied with the decision, then they can within fifteen days from the receipt of the notification apply for reexamination and trademark review and adjudication board will make a decision and will notify regarding the same in writing to both the parties.
Any party who is not satisfied with the decision made by the trademark review and adjudication board, within thirty days from the receipt of the notification shall institute legal proceedings in the People’s court. The people’s court will notify the other party in the reexamination to be the third party.
Trademark registration in China
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of Registration and the registration certificate is issued.