Overview of Application for Chinese Trademark Registration
The following description is general reference information and is not intended to be used as legal advice. If you are specifically interested in Chinese trademark applications or other relevant matters, please consult a Chinese patent attorney.
If you would like us to recommend a Chinese patent attorney, please do not hesitate to contact us.
[Recent development of Chinese trademark law amendment]
The Chinese trademark law will be amended. Please note that the following description is an overview of trademark applications in China as of July 2011.
* Only visual trademarks are registrable.
"Visual trademarks" include characters, graphics, Alphabet, numbers, three-dimensional marks, color combinations, and combinations thereof.
* Service marks and collective trademarks are also registrable.
The following trademarks are unregistrable.
* A Non-visual mark, such as scents or sounds.
* A mark which is not distinctive.
* A mark that conflicts with a property previously obtained by another person.
* Three-dimensional mark having a shape resulting from the goods, or being necessary to obtain a technical effect, or giving the goods substantial value.
* A mark which is a reproduction, imitation or translation of a well-known trademark of another person not registered in China and well-known for goods identical or similar to a person for whom the registration is applied for is to be used, if the mark is likely to cause confusion.
* A mark that is a reproduction, imitation or translation of a well-known mark belonging to another person registered in China, if its use misleads the public and is liable to create prejudice to the interests of the owner of the well-known mark.
* A mark that contains a geographical indication of the goods for which it is used, but the goods concerned do not originate from the indicated region and the mark misleads the public.
[Application to Registration and Renewal of Registration]
* The Chinese language shall be used in applying for trademark registration.Name of the applicant and the residence of the applicant shall also be translated into the Chinese language.
* Since a multi-class trademark application is not permitted in China, applicant must file a trademark application for each class of goods.
For example, if the applicant would like to register a trademark in three classes, the applicant must file three applications for trademark registration.
* A Power of Attorney shall be submitted.
Submission of a copy of the Power of Attorney is permitted.The Power of Attorney or copy thereof must be submitted at the time of filing the application for trademark registration.A supplementary submission will not be accepted.
* Description of designated goods/services
The designated goods/services must be specifically described.
Except for goods/services with new concepts, we recommend describing the name of the goods/services using the name listed in the "International Classification of Goods and Services for the Purposes of the Registration of Marks" published by the Trademark Office in China.
If the number of the goods/services exceeds ten, an additional fee is charged for the 11th and each subsequent good/service.
* In Japan, the date on which the application documents have been posted is deemed to be the filing date ("posting rule" or "deposited acceptance rule"). On the other hand, in China, the date on which Trademark Office has received the application documents is deemed to be the filing date ("reaching principle").
* The trademark application is substantially examined with respect to all requirements.
There is no system corresponding to the "Accelerated Examination" option in Japan.
* If the application fails to satisfy the requirements, the applicant will be notified of the rejection of the registration.
This notification is similar to a "Decision of Rejection" rather than a "Notice of Reason of Rejection." Specifically, the applicant cannot directly respond to the notice. To obtain an opportunity to overcome the rejection, the applicant must file an Appeal.
The period for filing an Appeal is within fifteen days from receipt of the Notice. This period also applies to foreign applicants and is non-extendable.
* In Japan, if there is reason of rejection for only a part of the designated goods/services and the applicant does not respond properly to the rejections, the entire application is rejected.
To the contrary, in China, even if the applicant does not attend to the rejection, only a part of the designated goods/services for which the reason of rejection is applicable is rejected. Additionally, the remaining part of the designated goods/services for which no reason of rejection is applicable is published, and if no opposition is filed or not successfully opposed, the trademark is registered.
* If the trademark satisfies all requirements, the trademark application is published.
Opposition to Registration
* Within three months after publication, any one who believes that he/she would be damaged by the registration of a mark may file an opposition.
* In China, a pre-grant opposition system is used. In Japan, a post-grant opposition system is used.
* The trademark is registered if an opposition is not filed. Even if an opposition is filed, if the opposition is withdrawn or the registration is not successfully opposed, the trademark is registered.
* Duration of the trademark registration is ten years.
* The trademark registration can be renewed every ten years indefinitely.
[Period of nonuse for cancelation or abandonment]
* The Trademark Office may cancel a trademark registration if the trademark has remained out-of-use for three consecutive years.
* Fees the applicant must pay to the Trademark Office in China are shown below (current as of July 1, 2011).
* One application for registration of a trade mark in one class for up to ten goods/services
(12,000 JPY at an exchange rate of 12 JPY/RMB)
* Additional fee for each item of goods/services exceeding the first ten goods/services
(1,200 JPY at an exchange rate of 12 JPY/RMB)
No registration fee is charged.
* In addition to the official fees, a service fee for the Agent in China and in Japan is required.
[Considerations for difference of designated goods and service between in Japan and in China]
* Even if the description of the goods/services in Chinese characters are same, the scope of trademarks in Japan and China are often different from each other.
For example, "Surface-active agents" and "Industrial chemicals" are categorized into Class 1 and the same "Similarity code" of "01A01" is assigned to both the "Surface-active agents" and "Industrial chemicals." In other words, in Japanese trademark examination procedure, the "Surface-active agents" and "Industrial chemicals" are treated as similar to each other.
Therefore, if a person registers a mark designating only "Surface-active agents," another person’s registration of the same mark designating "Industrial chemicals" can be prevented.
On the other hand, in China, "Surface-active agents" and "Industrial chemicals" are treated as dissimilar. Even if a person applicant registers a mark designating only "Surface-active agents," another applicant may register the same mark designating "Industrial chemicals." Thus, an applicant who registers a mark designating only a "Surface-active agent" may be sued for trademark infringement.
* The applicant should be mindful, since the same goods/services often categorized into different classes in Japan and in China.
For example, in Japan, a "Mobile phone strap" is categorized into Class 9.
On the other hand, in China, a mark used for a "Mobile phone strap" should be protected by designating Class 14 "Keyrings" or Class 26 "Accessory."
Specifically, the difference in Class 29 and Class 30 between Japan and China is significant.
* As can be seen in the foregoing examples, when filing a trademark application in China, mere transmission of the goods/services designated in Japan may result in an insufficient scope of protection.
To obtain a trademark with a sufficient scope of protection, the applicant must reconsider the designation of goods/services based on goods/services actually (planed to be) used/provided in China.
In this regard, the applicant should also be mindful of any description of designated goods/services in an International trademark registration designating China, as explained infra.
* Like Japan, China also has a "Similarity code."
A "Similarity code" is used during examination to judge whether a good/service and another good/service are similar. Even when a good/service is not determined to be similar to another good/service in the examination procedure due to differences in the "Similarity code," this conclusion may be reversed in a law suit.
For example, according to judicial precedent in China, "Automotive lubricants" and an "Automotive Motor", which had been judged to be non-similar in examination, are judged to be similar in a law suit.
[Considerations for designating China in International Application for Trademark Registration (Madrid Protocol)]
* Since China is a member of the Madrid Protocol, it is possible to file an application for registration using an International application for trademark registration.
* Unlike when filing a trademark application directly in China, a multi-class trademark application will be approved. No excess goods/services fees are charged, even if the number of the designated goods/services is more than ten.
* If no Office action is issued within 18 months from the date of notification of the international registration from the International Bureau to the Trademark Office in China, the international registration will have the same effect as a trademark is registered in China on the date of the international registration.
Since a trademark application filed directly in China may take about three years before the registration, International Application has an obvious advantage in the examination term.
In this regard, in China, the applicant should be mindful, since an Office action in an opposition procedure may be issued up to 18 months from the notification.
* Caution about description of designated goods/services
For example, if, the designated goods/service is described as "Class 25 Clothes" in Japan, "hats" is included as a designated good. However, "hats" are not included in the concept of the "clothes" in China.
Therefore, if the designated goods was "Clothes" only in Japan, there is possibility of failure of obtaining trademark rights in China or invalidity of Paris Convention priority, even though an International application describing "hats" as designated goods is filed afterward.
The designated goods/services in the International Application must be the "same as" or "narrower than" the goods/services designated in Japan, and determination of the "same as" or "narrower than" is depends on each designated country. In China, "clothes" is neither the "same as" nor "narrower than" "hats."
The same can be said for the judgement of validity of the Paris Convention priority.
Therefore, it is important to file a Japanese trademark application while taking the Chinese (or foreign) application in the future into consideration.