Trademarking: What is a Trademark?
Trademarks and service marks are words, names, symbols, or devices used by manufacturers of goods and providers of services to identify their goods and services, and to distinguish their goods and services from goods manufactured and sold by others. Some of the most famous examples of trademarking are: BIOMAGIC® for medicine, Apple® for computers, and the FLYCO® for electric appliances.
Trademarking: Availability of Protection
Trademarking is available for words, names, symbols, or devices that are capable of distinguishing the owner’s goods or services from the goods or services of others. A trademark that merely describes a class of goods rather than distinguishing the trademark owner’s goods from goods provided by others is not protectible. For example, the phrase “corn flakes” by itself is not protectible as a trademark for cereal because that term describes a type of cereal that is sold by a number of cereal manufacturers rather than distinguishing one cereal manufacturer’s goods.
Obtaining Protection through Trademarking
The most effective trademark protection is obtained by filing a trademark application form in the China Patent and Trademark Office. Although Trademark law also considers unregistered but prior use trademarks, but such protection is very limited.
Scope of Protection
Trademark law in general protects a trademark owner’s commercial identity (goodwill, reputation, and investment in advertising) by giving the trademark owner the exclusive right to use the trademark on the type of goods or services associated with the mark. Any person who uses a trademark in connection with goods or services in a way that is likely to cause confusion is an infringer. Trademark owners can obtain injunctions against the confusing use of their trademarks by others, and they can Favorites damages for infringement. For example, let’s say that Small Company, Inc. is selling a line of beauty products under the trademark VORAR. If Giant Company, Inc. starts selling beauty products under the trademark VORAR, purchasers may think that Giant Company’s products come from the same source as Small Company’s products. Giant Company is infringing Small Company’s trademark rights.
China adopts the “First-to-File” principle in acquiring the exclusive right of Trademark. To register a trademark, the applicant must file the application with the CTMO (China Trademark Office). Any foreigner or foreign enterprise intending to apply for the registration of a trademark or for any other matters concerning a trademark in China shall entrust the organization as designated by the State to act as his or its agent.
A trademark search is vital for new brands. It helps to find the conflicting marks that could prevent registration of your brand. Moreover, trademark searching requires knowledge of trademark law as well as an in-depth understanding of how the government trademarks database works. Our office is in a position to provide professional advice.
Trademark Registration Process
The information required for application include:
1) Trademark Confirmation (We would provide)
2) The applicant certificate
3) Image of trademark
4) List of goods or services and international class (we could make advice)
b. Acceptance Notice
When the China Trademark Office receives your application of trademark registration, they will give you an application number and issue the Acceptance Notice within 45 working days.
The China Trademark Office will examine your application to ensure that it is registrable and does not conflict with any earlier filed trademarks. Examination occurs around 12 months after application. Once your application has been examined, the examiner will either approve the application or issue an Trademark Refusal explaining why your mark hasn’t been approved.
If your application is approved, it will be published in Trademark Gazette for three months for opposition, and if no opposition is filed, the application will proceed to registration.
After publication, we will receive the Trademark Certificate in about 60 working days if no opposition is filed.
f. Time& Maintenance
If the registration application runs smoothly, it usually requires about 18 months.
Your registered trademark needs to be renewed every 10 years. It’s important to keep an eye out for infringements and take fast action if this occurs. We can monitor the trademarks register, alert you to any new applications that conflict with your registered trade mark and advise if further action is warranted.
Applications for trademark registration are handled in accordance with China’s Trademark Law and the Implementing Regulations of the Trademark Law.
China Trademark Office (CTMO) under the State Administration for Industry and Commerce (SAIC) is the government authority for the registration of trademarks in China. The Trademark Management Office under SAIC is the administrative arm responsible for managing all trademark-related matters, while Trademark Affairs Offices set up in various major cities are trademark agents designated by the state and under the supervision of SAIC. The Trademark Review and Adjudication Board, also under SAIC, is responsible for handling disputes related to trademarks. Provincial-level administration offices for industry and commerce handle matters concerning trademarks under their jurisdiction, such as protecting the exclusive right to use registered trademarks and investigating acts of trademark infringement.
Any foreigner or foreign enterprise intending to apply for trademark registration in China should file an application in accordance with relevant agreements concluded between the country to which the applicant belongs and China, or according to relevant international treaties to which both countries are parties, or on the basis of the principle of reciprocity.
Foreign-invested enterprises (FIEs) may apply for trademark registration in China either directly or through trademark agents. Foreign enterprises wishing to do the same should appoint agents designated by the state to handle trademark registration for foreign parties.
Points to Note in Application for Trademark Registration
In applying for trademark registration, the class and description of the goods should be put in the application form according to the prescribed classification system. Currently, China adopts the International Classification System, which classifies goods and services into 34 categories and 8 categories respectively.
Where an applicant intends to register the same trademark for goods in different classes, a separate application for registration should be filed in respect of each class of the prescribed classification of goods.
Where a registered trademark is to be used in respect of other goods of the same class, a new application for registration should be filed.
Where any design of a registered trademark is to be altered, a new registration should be applied for.
Where, after the registration of a trademark, the name, address or other matters concerning the registrant change, an application regarding the change should be filed.
A geographical indication may be the subject of an application for registration as a certification mark and a collective mark.
Right of Priority in Trademark Registration Application
Where an applicant, within six months from the date of his first-time application for registration of a trademark in a foreign country, applies for registration of the same trademark for goods in the same class in China, he may enjoy the right of priority in accordance with any relevant agreement entered into between that country and China or any relevant international treaties to which both countries are parties, or on the basis of the principle of reciprocity.
Where a trademark is used for the first time in respect of a commodity displayed in an international exhibition organised or recognised by China, the applicant of the trademark is entitled to the right of priority for a period of six months from the date of the display of the commodity.
Application for Change of Details of Registered Trademark
To change the name, address or other registered particulars of a trademark registrant, an application for change should be filed with CTMO. Upon granting approval, the Trademark Office will issue a certificate to the registrant and announce the change; for rejected cases, CTMO will notify the applicant in writing, stating the grounds for rejection.
To change the name of a trademark registrant, a document in support of the change issued by the registration organisation should be submitted. Where the name or address of a trademark registrant is to be changed, the trademark registrant should make the same modification in respect of all his registered trademarks.
Application for Assignment of Registered Trademark and Transfer of Exclusive Right to Use a Trademark
Where a registered trademark is to be assigned, both the assignor and assignee should submit an Application for Assignment of Registered Trademark to CTMO, while the application procedures are to be completed by the assignee. Upon approval granted by CTMO, a certificate to that effect will be issued to the assignee and the assignment will be announced.
When assigning a registered trademark, the trademark registrant should assign simultaneously the same or similar trademarks registered by him for the same or similar goods.
If the exclusive right to use a registered trademark is to be transferred for reasons other than assignment, the transferee should complete the procedures for the transfer of such right with CTMO by presenting the relevant supporting documents or legal documentation. When transferring the exclusive right to use a registered trademark, the transferor should transfer simultaneously the same or similar trademarks registered by him for the same or similar goods.
Validity Period and Renewal of Registered Trademark
The period of validity of a registered trademark is 10 years, counted from the date of approval of the registration. For renewal, the period of validity of each renewal is 10 years, counted from the day immediately following the expiration of the preceding validity period.
Where the registrant intends to continue to use the registered trademark beyond the expiration of the validity period, an application for renewal should be made within six months before the said expiration. If no application is filed within this period, a grace period of six months may be granted. If no application is filed at the expiration of the grace period, the registered trademark will be cancelled.
To apply for renewal of a trademark registration, an application for renewal of trademark registration should be filed with CTMO. Upon approval granted by CTMO, a certificate to that effect will be issued to the registrant and the renewal will be announced.
Authorised Use of Registered Trademark
A trademark registrant may, by signing a trademark licensing contract, authorise other persons to use his registered trademark. The licensor should file a copy of the trademark licensing contract with CTMO for the record within three months from the signing of the contract. Parties authorised to use the registered trademark of others must display the name of the licensee and the place of production of the goods on the goods using the licensed trademark.
Re-issuance of Certificate of Trademark Registration
Where a Certificate of Trademark Registration is lost or damaged, it is necessary to apply for re-issuance of the certificate and the registrant should submit an Application for Re-issuance of Certificate of Trademark Registration and five copies of the reproductions of the registered trademark to CTMO. Where the Certificate of Trademark Registration is lost, a declaration should be published in the Trademark Gazette. Where the certificate is damaged, it should be returned to CTMO.
Protection of Well-known Trademark
CTMO under SAIC is responsible for endorsing and managing well-known trademarks.
A trademark registrant seeking protection for his well-known trademark should file an application with CTMO. Upon endorsement, CTMO will notify the applicant and publish the relevant information. For trademarks endorsed by CTMO as well-known, no application for renewal of endorsement is necessary within three years after endorsement.
If any person uses a trademark that is identical with or similar to the well-known trademark of another person on goods of a different class, insinuating that the goods are in some way associated with the registrant of the well-known trademark thereby causing possible damage to the registrant, the registrant of the well-known trademark may make a request, within two years from the date on which he obtains or should have obtained knowledge of such acts, to SAIC to stop such acts.
Once a well-known trademark has been endorsed, SAIC will not approve the use of any word or device that is identical with or similar to the said well-known trademark by any person as part of the name of an enterprise which may mislead the public. For well-known trademarks that have been registered, the registrant may, within two years from the date on which he obtains or should have obtained knowledge of such acts, request SAIC to cancel it.