1) The applicant’s full name and address, both in English and Chinese. If the applicant has previous application/registration in China, we suggest using the same information; if the applicant does not already have a Chinese name or address, we would be happy to provide suggestions.
2) The applicant’s nationality.
3) A Clear copy of the trademark. If the trademark is in color, please confirm which colors will be claimed.
4) The Goods and services to be designated for registration. Generally, the CTMO only accepts standard goods or services that are listed in the Chinese Classification of Goods or Services. When an applicant designates non-standard goods or services, the CTMO usually issues a notification to amend the application before the CTMO will perform the substantive examination. E-filings can only be made with standard descriptions. For more information on the Chinese Classification of Goods and Services, please click here;
5) For individual applicants, a copy of the applicant’s passport or photo ID (which clearly shows all personal information, such as name, nationality and date of birth);
For non individual applicants, a copy of the applicant’s business license (also known as “Certificate of Incorporation”).
It usually takes nine to twelve months to obtain a trademark registration certificate from the CTMO.
When an application is filed, the CTMO will first check its formalities, which includes the applicant’s information and the list of designated goods and services. Assuming everything is in order, the CTMO will issue a formal filing receipt (recently, this has been taking about one month from the date of fling to receive) and then the CTMO will begin the substantial examination. If the CTMO approves the application for registration, the mark will be published in the official Trademark Gazette. After publication, third parties will have 3 months to file any opposition actions against the mark. If no one files an opposition, or the opposition does not succeed, then the mark will be registered.
If, however, the CTMO rejects the applications, the client will have an opportunity to appeal the decision with the Trademark Review and Adjudication Board (“TRAB”).
Trademark registrations are valid for ten (10) years from the date of registration, and are renewable at every ten-year interval thereafter. Renewal applications can be filed twelve months before the expiration date. For an additional fee, applicants can also file a renewal application for up to 6 months after the trademark’s expiration date.
It is not necessary to submit use evidence to the CTMO unless the mark is subject to a non-use cancellation action, or in cases where use evidence is needed, such as certain opposition or invalidation actions.
Use evidence may include documents relating to sales, advertising, manufacturing, imports and/or exports, honors, awards, etc. Self-made evidence (such as brochures or internal documents), alone, will have a very weak probative value, but it can be corroborated with other reliable evidence.
Use evidence must be generated in mainland China. There is no specific requirement regarding the quantity of evidence. However, the evidence should show:
1) the concerned mark;
2) that the mark was used in the claimed goods or services;
3) the user of the mark, including the registrant and/or its licensee(s); in the case of licensee, evidence proving the licensor/licensee relationship exists should be provided;
4) the usage date, which must fall within a prescribed time limit;
5) that the mark was publicly used in the stream of commerce.
In a response to non-use cancellation case, if non-use evidence is available, a justifiable reason for the non-use of the trademark is required, which may include:
1) extraordinary events beyond the registrant’s control;
2) government restriction;
3) bankruptcy; or
4) other factors that are outside of the registrant’s control
1) Conduct an investigation to try to get more detailed information about the infringer, such as the registration date and the involved business, its business relationship and the possible trademark exposition background, etc. The following options could be selected based on the result of the investigation in consideration of the scale and scope of infringing activities.
2) Sending a Cease and Desist Letter to the infringing party to deter them from infringing. However, according to our practice, the effect of such letter may be limited, as most Chinese infringers choose to ignore such kind of letters or warnings.
3) Filing administrative litigation or an Administration for Industry and Commerce (“AIC”) action, based on the investigation’s results.
If the infringers are small scale operations and there are not complicated facts concerning the infringement, we would suggest filing a complaint with the local AIC office to conduct a raid and issue an official decision, usually including injunction orders, seizure of infringing products, destruction of infringing products and the imposition of fines. Usually it takes 3 to 6 months to complete an AIC action. AIC actions cannot award damages.
If the infringer is a large company or has a large volume of sales, or if it is suspected that the local protection may affect the AIC action, we would suggest filing civil litigation in the appropriate court. Usually, it would take around one year for the applicable court to issue a decision for a first instance case. Damages and injunctions are the remedies available through civil litigation.
Yes, we recommend having foreign brands file an application to register a trademark in Chinese characters (in addition to their original language) for the following reasons:
1) From a marketing aspect, presenting a brand in both English and Chinese will help promote the brand in the Chinese market, and make it easier for consumers to remember. The majority of Chinese people do not understand English, which means that only using Latin trademarks in China can seriously narrow the scope of potential customers.
2) From a legal aspect, the exclusive right of a mark in English does not automatically extend to its Chinese equivalent, unless it is a direct translation. We have seen many cases where the true owner of an English brand does not select a Chinese equivalent, only to have consumers make up a Chinese “nickname,” where any third party can legally register the Chinese “nickname” before the true owner.