What is the application process for registering a trademark in China? How long does it take and how much does it cost? What material do we need to prepare?
In China, the protection of the exclusive right to use a trademark is based on registration.
Registration can be obtained either by filing an application directly at the CTMO (Domestic application), or by filing an application at the World Intellectual Property Organisation (WIPO) on the basis of a trademark registered or applied in another country than China, requesting the extension of the trademark to China (international application).
Trademark application in China
It is necessary to file one application per class of goods or services, and to submit a precise list of the goods or services for which the protection is required (a general reference to the reference number of the relevant class would not be admitted).
The following documents need to be produced:
- Five copies, printed on smooth and clear paper, or replaced by photographs not larger than 10×5 cm;
- If colour is claimed, five copies in colour and one copy of the black and white design;
- For a three-dimensional or a colour-combination trademark, a specific statement indicating that the shape or the colour combination is claimed as a trademark, together with a literal description;
- If the trademark is in a foreign language, or contains foreign language, a translation must be provided.
- If the trademark was recently registered in another country (less than 6 months) or displayed in an exhibition in China during the past 6 months, it is possible to date back the application to the time of the prior registration or exhibition, by providing the corresponding evidence.
The cost is an official fee of CNY 1,000 (Chinese Yuan) per application covering 10 goods/services. If the number of goods/services exceeds 10 in one application, an additional fee of CNY 100 is charged for each of them. In addition to the official fee, it is normally necessary to pay the services of the trademark agent who files the trademark (an average of EUR 500 per trademark).
The registration procedure contains three stages:
- A formal examination where the CTMO verifies that the trademark file is complete and the corresponding fees have been paid.
- A substantial examination, where the examiner verifies that all the other requirements, absolute grounds (legality, non-functionality, distinctiveness) and relative grounds (availability), are met. Once the trademark has passed this examination, the trademark is preliminarily approved for registration.
- Publication in the official trademark gazette. The publication date marks the start of a three month period during which third parties may file an opposition with the CTMO. If no opposition is filed (or if an opposition is filed but fails), the trademark is registered and the period of validity of the trademark (10 years) starts at the end of the 3 months opposition period.
Due to the recent backlog of pending applications existing at the CTMO, the length of time was, until recently, considerable. It could take up to approximately three years for a trademark application to reach the stage of preliminary approval. In order to deal with this problem, the Trademark Office hired 300 new examiners to reduce the backlog. The time between date of filing and preliminary approval and publication should now be approximately 18 months unless an opposition to the registration is filed.
In any event, it may be advisable to file an international trademark application (extension of a national trademark to China, through the World Intellectual Property Organisation). A registration can be obtained in one year.
The period of validity of the trademark is 10 years, renewable without limitations.
Can I apply for an extension of my domestic trademark or apply for international registration?
This possibility is only available to nationals of a state that is a party to the Madrid Agreement or the Madrid Protocol, the two main international treaties concerning the international registration of trademarks. (The two international conventions are very similar, but the signatories are not exactly the same. The main difference is that, in the Protocol, it is possible to apply for the extension of the trademark to other countries, even before it is registered in the country of origin, when it is still at the stage of application). China is a member of both. More information can be seen at http://www.wipo.int/madrid/en/
The application for extension to China is made to the office of WIPO in Geneva. For the nationals of a member State of the Madrid Agreement, the application must be based on a registered trademark. For the nationals of a member State of the Madrid Protocol, a simple trademark application, not yet registered, is sufficient.
Upon receipt of the application, WIPO enters a record in the International Register and publishes the application in the International Trademark Gazette and notifies the Trademark Authorities of the country(ies) concerned by the extension. A period of three months for oppositions by third parties starts on the 1st day of the next month following the publication in the Gazette.
If no objection is made by the Trademark Authority of the countries concerned, within a period of one year (Madrid Agreement) to 18 months (Madrid Protocol) from the date on which the trademark was recorded in the International Register, the trademark is considered registered, from the date of the certificate issued by WIPO.
The period of validity of the trademark is 20 years, renewable without limitation. However, fees must be paid in two instalments, the first after 10 years. Therefore, in practice, the duration is the same as for a trademark filed directly in China.
How does a well‐known trademark differ from a standard trademark in China?
There is no ‘well‐known trademark registry’ as such, but once an administrative or judicial decision has been made, stating that the trademark is well‐known and ruling in favour of its owner, a record is kept and the owner may use such decision(s) in future cases in order to enjoy additional advantages.
It will also be easier to prevent the malicious registration and use of the trademark by others, even on non‐similar goods or services.
The well‐known status may also be used and an additional argument to prevent the use or registration of trademarks that, in normal circumstances (a ‘standard’ trademark), might not be considered as similar.
People’s Courts are likely to grant higher damages, if your TM is considered ‘well‐known’.
It is easier to prevent the registration of the trademark as an enterprise name (whereas if the trademark is not recognised as “well‐known”, it is necessary to prove that the mark is used prominently in the enterprise name.
It is easier to prevent the registration of the mark as a domain name (whereas for a “normal” mark it is necessary to prove that actual transactions under the disputed domain name have been conducted).
What kind of material should we submit when filing an application for recognition of a well‐known trademark?
According to the Trademark Law, the following factors are taken into account in the identification of a well‐known trademark:
- Extent of the relevant public’s awareness of the target trademark
- Duration of the use of the target trademark
- Duration, extent and geographical scope of any publicising work for the target trademark
- Protection records of the target trademark as a well‐known trademark
- Other factors concerning the popularity of the target trademark
A specific regulation called “The Rules on the Recognition and Protection of Well‐known Trademarks” lists further materials that could be used as evidence to prove the well‐known status of a trademark. You will need to produce relevant documents certifying:
- The extent to which the said trademark is known to the relevant public
- The duration of use for the said trademark, including the relevant documents certifying the history and scope of use, and registration of the said trademark
- The duration, extent and geographical scope of any publicity activity for the said trademark, including documents relating to the mode of advertising, publicity activity and promotional campaign, the territory, the type of media, and the investment in advertising, etc
- The record of protection of the said trademark as being well‐known, including relevant documents certifying the fact that the said trademark has been protected as well‐known in China or other countries or regions
Other relevant documents certifying the well‐known status of the trademark, including relevant documents concerning the output, sales volume, sales revenue, profit and tax, as well as sales area, in the preceding three years, of the principal commodity bearing the said trademark
It is not necessary to fulfil each of the above criteria. But special attention should be paid to materials relevant to the reputation of the trademark in China. This does not mean that other materials relating to the reputation in the rest of the world would not be accepted, but they cannot be considered as sufficient.
It is therefore extremely advisable to constitute and keep updating a file on each trademark, so that the production of such file can be made easily with corresponding translations in Chinese, within the required time limits, as the case may be.
Please feel free to contact us for detailed informaion.
Evershine CPAs Firm//Evershine IPO (Patent Attorney) Firm
Dale Chen Principal Partner CPA/Patent Attorney/MBA
Office Tel: +886-2-2717-0515 E100
Address: 6th Floor ,378, Chang Chung Rd, Taipei City, Taiwan
Jerry Chu Manager,Who graduated from USA graduate school and speak well in English
Office Tel: +886-2-2717-0515 E103
Address: 17D, Oriental Kenzo Apartment C, No. 48 Dongzhimen Outer St. Dongcheng District, Beijing, China
Manager Zoe Zhou (In both English and Chinese)