What is a trademark according to Chinese law?
According to Chinese law, a trademark is a visual sign that distinguishes a product or a service.
This distinctive sign may consist of letters, characters, figures, designs, symbols, three-dimensional shapes and / or colors used singly or in a combination, as well as sounds which are capable of distinguishing the product or service.
What is the procedure to register your Trademark in China?
The registration of a trademark in China can be effected either directly by submitting a request to the Trademark Office, or via applying for the territorial extension to China of an existing (non-China) trademark to the World Intellectual Property Organization.
However, this second procedure is reserved for trademarks that have been internationally registered in accordance with the Madrid Agreement.
To the extent that this procedure is not proper to China, but results from the application of international rules, this article focuses on the registration of trademarks through filing with the Trademark Office in China.
The reason why you should register your Trademark in China
The registration of a trademark in China grants you the exclusive ownership of the trademark throughout the duration of the registration .
This approach makes it possible to prohibit any third party from using the trademark and control the image of the products and / or services associated with your trademark.
In addition, your trademark constitutes an asset which value will increase as the awareness of your products/services grows.
Registering a trademark is therefore a must before starting to sell your products/services in China.
Does the prior use of a trademark (before registration) confer certain rights?
In China, the ownership of the trademark belongs to the person who was the first to register it and not the one who was the first to use it.
However, in some special cases, the prior use allows the first user to have certain rights (for example when the trademark can be recognized as “well-known”).
Who can register a Trademark ?
A trademark may be registered by a company or an individual without any restriction in terms of nationality or residence.
Registration can take place either individually by a single applicant, or jointly by several applicants.
Why you should register your trademark in Chinese characters ?
- A phonetic approach, namely finding Chinese characters with a phonetic equivalence with the foreign trademark ; and
- A semantic approach, namely finding Chinese characters with a flattering meaning for the product or service concerned.
What are the requirements for registering your trademark in China?
- It must consist of distinctive features not characteristic of a product or service. Accordingly, the trademark cannot be purely descriptive of the product or service. The trademark cannot be the generic name or the name necessary to describe the product or service concerned, same as it cannot it consist of an indication of its quality, function, composition or main characteristics ;
- It must be available for registration and should not to prejudice the legitimate rights of a third party (such as the ownership rights of a third party over a previously registered identical or similar trademark) ;
- It must not be contrary to public order ; and
- It must not create confusion in the minds of consumers.
Which trademarks, or components of a trademark, cannot be registered?
- The name of the State, the national flag, the national emblem, the military flag or the military decorations of The People’s Republic of China ;
- The name of central government agencies of the The People’s Republic of China ;
- The name of States, national flags, national emblems or military flags of foreign countries (except when such countries authorize their use as trademarks) ; or
- Flags, emblems or names of international intergovernmental organizations (except when such organizations authorize their use as trademarks).
- Of a discriminatory nature against any nationality ;
- That allow exaggeration and deception in the promotion of products ;
- That violate morality or having a negative influence ; or
- Taking the names of Chinese or foreign geographical regions.
The registration of your trademark must follow the following steps:
- Anteriority search i.e. verifying whether a trademark identical or similar to the one you wish to protect has already been registered. Our teams can of course assist you, but you can also conduct the anteriority the search yourself on the Trademark Office public database. The anteriority search is a difficult exercise, especially as the number of trademark applications has exploded in recent years ;
- Filing of the application with the Trademark Office. It must notably include: the application form and a representation of the trademark ;
- Review of the application by the Trademark Office: the decision shall be rendered within 9 months from the date of receipt of filing;
- Publication of the application in the Trademark Gazette, opening a three-month period for objection by third parties. In the absence of any objection, the trademark is deemed to be registered after the expiry of that period ; and
- Issuance of a certificate of registration by the Trademark Office: the issuance of this certificate usually occurs within three months after the expiry of the objection period.
If the Trademark Office rejects the application, the applicant may appeal the decision to the Trademark Appeal Board. The decision issued by this Board may itself be appealed to the courts so that the administrative authorities do not have the last word in trademark registration matters.
In which classes should you register your trademark?
When registering, you should consider the classes in which register your trademark. This is facilitated by the fact that China has adopted the International Classification of Goods and Services (ICGS).
It is recommended to register your trademark in various classes. This ensures its effective protection for future new products and services, and reduces the risk of trademark squatting.
However, this strategy is limited by the risk of cancellation of registration for the non-use of the trademark in a given class for a continuous period of three years.
If registration of the trademark is made in several classes, a separate registration application form must be presented for each class.
What is the duration of the protection ?
The period of validity of the trademark is 10 years from the date of registration, with the possibility of renewal.
Renewals can be made within 12 months before expiry, with a 6-month grace period for renewal after expiry of the term.