1.As for foreign applicants in China, who are qualified for trademark (hereinafter referring to mark in respect of goods and/or services) registrations?
Where any foreign citizen or enterprise applies for registration of a trademark in China, the application shall be handled in accordance with any agreement concluded between the country to which the applicant belongs and China, or any international treaty to which both countries are parties, or on the basis of the principle of reciprocity.
2. Is a foreign applicant required to entrust a local Chinese agency to proceed with trademark related matters before Trademark Office (hereinafter referred to as TMO)?
Yes. Any foreign applicant intending to apply for registration of a trademark or to deal with trademark related matters in China should entrust an agency having the trademark agency qualification recognized by the State to act as his/its agent.
3. What kinds of signs could be registered as trademarks?
Any visually perceptible signs capable of distinguishing the source of goods or services, including words, devices, letters of an alphabet, numerals, three-dimensional signs, combination of colors, sounds as well as the combination of such signs.
Any trademark applied for registration shall be so distinctive as to be distinguishable and shall not be in conflict with other person’s prior-acquired legitimate rights.
4. What kinds of signs should not be used as trademarks?
The following signs should not be used as a trademark:
1) Those identical with or similar to the State name, national flag, national emblem, national anthem, military flag, military emblem, military song, or medals etc., of China, and those identical with the name or the symbol of the Central State government organizations, as well as the name of the specific place where the Central State government organizations are located, or the name, device of any symbolic building of the place.
2) Those identical with or similar to the State name, national flag, national emblem or military flag, etc., of any foreign countries, except those approved by the government of the country concerned.
3) Those identical with or similar to the name, flag or emblem etc., of any international intergovernmental organization, except those approved by the international intergovernmental organization concerned or unlikely to mislead the public.
4) Those identical with or similar to the official sign or inspection mark indicating control and guarantee except those with official authorization.
5) Those identical with or similar to the symbols, or names, of the Red Cross or the Red Crescent.
6) Those having the nature of discrimination against any nationality;
7) Those deceptive, which are likely to mislead the public to misidentify the quality or other characteristics or place of origin of the goods; and
8) Those detrimental to socialist morals or customs, or having other adverse social impact.
The geographical names as the administrative divisions at or above the county level and the foreign geographical names well-known to the public shall not be used as trademarks, but those geographical names having otherwise meanings or serving as component part of a collective mark or certification mark shall be exclusive. Where a trademark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid.
5. What kinds of signs shall not be used as trademarks?
The following signs shall not be registered as trademarks:
1) Signs that consist exclusively of the generic names, designs, or model numbers of the goods in respect of which the trademark is used.
2) Signs which consist exclusively of direct indications of the quality, primary raw material, functions, intended purposes, weight, quantity or other characteristics of goods.
3) Other signs which are devoid of any distinctive character.
Signs mentioned in the preceding paragraph may be registered as trademarks if they have acquired distinctive character through use and are capable of being readily identified and distinguished.
Where a three-dimensional sign is the subject of an application for registration of a trademark, the trademark shall not be registered if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.
6. How to claim conventional priority and when shall the priority document be submitted to TMO if priority is claimed in China?
Conventional priority can be claimed within six months from the date of filing outside China. Certified priority document can either be submitted together with the filing of the Chinese application or be supplemented within three months from the filing date of the Chinese application.
If a trademark is first used on goods exhibited at an international exhibition sponsored or recognized by the Chinese government, the applicant for registration of trademark has a right of priority for a period of six months from the date of exhibition of the goods.
7. Does China adopt first-to-file principle for trademark registration?
The Trademark Law adopts the first-to-file rule for obtaining trademark rights. The first applicant to file an application for registration of a mark will pre-empt all other later applications for the same mark in the same class. If two or more applications are filed for the same mark in the same class on the same day, the trademark used first shall be accepted.
8. Which stages are involved in examination of a registered trademark in China?
Applications are examined as to the formality and substance. Examination to the formality will include the correctness of document and classification. Examination to the substance will include the registrability of the mark and possible conflict with prior rights.
1) Formal Examination
Upon formal examination, for application with complete documents and the documents are prepared in correct ways, the Trademark Office issues the Official Filing Receipt; otherwise, the Trademark Office issues the Not-accepting Notice.
Where amendments are needed for the documents filed, the Trademark Office issues Notice of Correction, requesting the applicant to respond to the amendments within 15 days. Application will be deemed withdrawn if no response is made within said 15 days.
2) Substantive Examination
A trademark registration application enters the substantive examination procedure after passing through the formal examination. Upon substantive examination, the Trademark Office will initially approve the application if it meets the requirements of the Trademark Law, and publish the application at the Trademark Gazette.
9. What is the duration of a registered trademark and the valid period for filing a renewal application?
A registration is valid for ten years starting from the date of registration and can be renewed indefinitely, each time for ten years. Where a registrant intends to continue to use the registered trademark beyond the expiration of the validity period, an application for renewal of the registration shall be made within 12 months before the said expiration. Where no application therefore has been filed within the said period, a grace period of 6 months may be allowed. If no application is filed at the expiration of the grace period, the registered trademark shall be canceled.
10. What is the protection scope of a registered trademark?
A registered mark is protected in respect of the goods/services registered, unless it is recognized as well-known trademark. In particular, any of the following acts shall be an infringement upon a registered mark:
1) To use a trademark that is identical with a registered trademark in respect of the same goods without authorization of the proprietor of the registered trademark;
2) To use a trademark that is similar to a registered trademark in respect of the same goods or to use a trademark identical with or similar to a registered trademark in respect of similar goods, without authorization of the proprietor of the registered trademark, where such use is likely to cause confusion;
3) To sell the goods that infringe the exclusive right to use a registered trademark;
4) To counterfeit, or to make, without authorization, representations of a registered trademark of another person, or to sell such representations of a registered trademark as were counterfeited, or made without authorization;
5) To replace, without authorization, a registered trademark and put the goods bearing the replaced trademark on the market;
6) To intentionally provide a person with conveniences for such person's infringement of the trademark of another person or facilitate such person’s infringement of the trademark of another person;
7) To cause, in other aspects, prejudice to the exclusive right of another person to use a registered trademark.
11.Is there any use requirements in China for registered trademarks?
A registration is subject to cancellation if not in use for three consecutive years. Use of a trademark includes its use on goods, packages or containers, or in trading documents, advertising, exhibition or other business activities.
12.Is there any necessity to file the corresponding Chinese version for a Latin mark?
Registering the Chinese version for a Latin mark is necessary if the Chinese version is to be used. Even if it is not to be used, registration of its Chinese version is also necessary if the Latin mark has obtained its Chinese version in fact that is widely accepted by consumers especially when the mark is coined.