CHINA Trademark-Trademark FAQ

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Trademark FAQ 1 1 33. Is your national office accessible online? Yes. Please visit http://sbj.saic.gov.cn. 32. Does the International Classification System apply? Yes. 31. Is it necessary to indicate a trademark registration on goods or services? Yes. The registrant has the right to use the markings registered Trademark in Chinese characters or ®? 30. What is required to renew a registration? An application to renew a registration should be submitted along with a power of attorney and five specimens of the mark. Renewal applications must be filed within six months before expiration, but an additional six month extension may be allowed for an additional fee. 29. How long does a registration last? The term of registration is ten years from the date on which the registration is approved; it is renewable for ten-year periods if a renewal application is filed within six months prior to expiration. There is a grace period of six months after expiration. 28. What is the territorial limit of a registration? The territorial jurisdiction is mainland China. 27. Does a license have to be recorded? No. A license agreement may be recorded with the Trademark Office within three months since its execution, but it is not mandatory. 26. Can an application or registration be licensed? A registration can be licensed. Consult a Chinese trademark attorney. 25. Does an assignment have to be recorded? Yes. An assignment must be recorded and approved by the Trademark Office. Failure to apply for approval of an assignment does not jeopardize the validity of the registration. 24. Must an assignment include goodwill? No. The assignment may be either with or without goodwill. 23. Can an application or registration be assigned? Since the enforcement of the revised Chinese Trademark Law, a pending application may be assigned. A registration may be assigned. 22. Can an application be opposed or cancelled by third parties? Yes. Third parties may file an opposition to an application within three months following publication of the mark. Third parties may petition to cancel a registered mark based on a registrant¡¯s breach of a technical provision of the law or on grounds that the registration was obtained by fraud. 21. What is the legal effect of a registration? The registrant has an exclusive right to use the registered trademark and may sue for infringement and cancellation of subsequent conflicting applications and registrations. 20. What rights does an application confer? The application can be cited against, or used to oppose, a subsequent conflicting application. China has adopted the first-to-file rule, and therefore any relevant, similar pending application can be officially cited against any later application, or used in opposition proceedings against such a later application. 19. How long is the registration process? The registration process takes approximately 15-18 months from the filing date. 18. What response to official objections is required? The applicant has 15 days to appeal a registration refusal with the Trademark Review and Adjudication Board. No extension is available. 17. What kind of examination (if any) will a new application undergo? An application will receive a preliminary examination to determine compliance with formal requirements and the existence of any conflict with the PRC Trademark Law and earlier applications or registrations. Upon acceptance of the mark, it will be published for opposition. Three months later, the mark will be approved for registration if no opposition is filed. 16. What information is first published about an application/ registration and when is it published? After preliminary approval, the application will be published with the publication number, which is to be the registration number; filing date; trademark as filed; designated goods or services; applicant; address and agent. Publication takes approximately 15 months from the date of filing. 15. For an application to be valid, are there any particular requirements that must be met? No. An application may be filed by any entity or individual who uses a mark in conducting business. Applications may be filed for marks that are not in use. The first to file for a registration is entitled to it. 14. Is there any advantage to using a trademark before filing an application? Generally speaking, rights to a mark are acquired through registration. However, the advantage of earlier use of a trademark may be effective where applications are filed on the same day for identical or similar trademarks on the same or similar goods or services by two or more applicants. The preliminary approval (after examination), and the publication shall be made for the trademark, which was the earliest used, and the applications of the others shall be refused and their trademarks shall not be published. 13. Is using a variation of the trademark allowable? If the variation alters words or devices comprising the mark as registered, use of a slightly different trademark might affect the enforceability of the registration and a new application may be necessary. A Chinese trademark attorney should be consulted on this issue. 12. Must a trademark be used after registration, and what happens if a trademark is not used? A mark that has not been used for three years after registration is vulnerable to cancellation. 11. Is it possible to take advantage of a home application or registration? If an applicant of home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding the Chinese application, the filing date of the home application can be claimed as the filing date in China. Similarly, if an applicant of home country is a member of the World Trade Organization (but is not a member of the Paris Convention) or the Madrid Protocol, it should be possible to claim the home filing date; consult a Chinese trademark attorney. 10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services? Yes. A separate application must be filed for each class of goods or services. 9. Is local registration the only option, or are there international alternatives? A Chinese application only is effect in China. China has acceded to the Madrid Protocol. 8. What information must be provided before filing? Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered, and a duly signed power of attorney. In regard to filing requirements generally, and particularly in regard to those for collective or certification marks, consultation with a Chinese trademark attorney is recommended. 7. How do I file? An applicant overseas may file either via a home trademark attorney or by directly contacting a Chinese trademark attorney. 6. Should a trademark be searched before filing? Applications are officially searched as to prior marks, but this takes several months. If no pre-filing search is made by the applicant, and the official search is clear, the cost of the pre-filing search is saved. However, if the official search is not clear, the pre-filing search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a pre-filing search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else. 5. How are domain names protected? At present, domain names are protected under the Law of the PRC for Countering Unfair Competition in the People¡¯s Court, and the registration of domain names as trademarks may be beneficial to the protection of domain names. 4. Can a trademark be registered for retail and like services? Although a trademark cannot be registered for retail or wholesale services at present, the applicant could, as an alternative, register the trademark on the services of sales promotion for others, export-import agencies, etc. in International Class 35. 3. What is registrable? Words, numbers, lettering, devices, a combination of colors, three-dimensional design or a combination of the aforementioned elements that is distinctive and not prohibited by law may be registered as a trademark or service mark. Collective marks and certification marks are also registrable. Registration of trademarks for pharmaceuticals and tobacco is mandatory. In addition, pursuant to the Provision for Recognition and Protection of Well-Known Trademarks enacted in 2003, holders of well-known trademarks may apply to have their marks identified as well-known marks to obtain expanded protection covering goods in additional classes. 2. Is registration of a mark mandatory? Registration is not compulsory, but it is advisable. Trademark rights depend upon ownership of a registration and, as discussed below, the legal benefits of registration may not be available otherwise. 1. Why register a trademark? For both commercial and protection reasons, trademarks should be registered. [br][br][br][br]The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in China. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.