Trademark Resources

Trademark Comparison

China vs USA

Principle of Registration

China “First to file” principle
China Trademark Law is based on the “First to file” principle. The ownership of a trademark is depending on the legal registration. To put it simply, who register the mark, who is the owner of the mark.
USA “First to use” principle, principal register and supplementary register
Common Law is used in US, and the trademark law in US follows the principle of “first to use”-that means the precedent user is protected by the law. In the US, the trademark law only protects the mark which has been actually used in business. On the basis of “‘First to use’ principle”, the registration can either be done or not. The unregistered trademark can be protected during its using period. In addition, the registered trademark owner has the right to investigate the infringers and ask for compensation. But the owner of unregistered mark can only apply for the stop of infringement without any related compensation. The US trademark law combines principal register and supplementary register. For these legal marks and without violating the trademark examination rules, the supplementary register is an option. When the mark conforms with the rules later, it can be put into the principal register. Supplementary register goes as trademark trial.

Constituent Elements of Marks

China Word, picture, figure, three-dimensional picture and color, or any combination.
USA Word, name, symbol, device, colors, flavors, sound, product packaging, appearance design. or any combination

Official Management Office

China China Trademark Office is in charge of the trademark.
USA The trademark user can register either through the federal system or the state (where the mark is used) system.
  • US Patent and Trademark Office is working with the federal registration conforming to the trademark law. Through this system, the registered marks can be used and protected in whole states. It has the priority of being used and protected.
  • Every state in the US has its own trademarks legislative authority, state registration right and the power to build its registration authority. However, these rights are only for the state but not for the other states.

Notice that foreigners, who want to register US trademark, must follow the federal system, because the state has no power to accept any foreign registrations.

Trademark Examination System

Examination Type China USA
Foreign words Not so strict—you only explain whether it has meaning in Chinese or not; If it has meaning in Chinese, then describe it. Very strict—you not only need to describe pronunciation of each letter, but also need to explain English meaning of each word.
Figures You only need to specify “Figure” in Application. Description of the figure is not required. The examiner might require you to describe the figure in detail.
Colors a. “Single color mark” won’t be protected by the Law.
b. “Grey” in trademarks can be protected as black and white marks.
a. “Single color mark” can be registered.
b. “Grey” is considered as a single color, unless it is used as shadow in marks.
Reference of Classification There is no written book as “LEISI SHANGPIN HE FUWU QUFEN BIAO” in America for reference. It is based on The Nice Classification and widely used for reference in China.

Review on refused trademark application

China The applicant can file for review to Trademark Review and Adjudication Board of State Administration for Industry and Commerce within 15 days after receives the rejection. In case the applicant refuses to accept the decision, he can sue to Intermediate People’s Court of Beijing within 30 days after receives the decision. (All the timeline mentioned above cannot be postponed.)
USA The applicant can file for review to the same examiner of US Patent and Trademark Office within 15 days after receives the rejection. Before the deadline, the applicant can file an extension of 6 months. If the examiner insists on his rejection, the applicant could sue to US TTAB. (Non-lawsuit)

Trademark Oppositions

China A party must file its opposition within three months of the date the mark is published in the Gazette. The CTMO will judge the opposition after the opposee responses to the CTMO. If any party is unsatisfied with the judgment, he can apply for review within the following 15 days. If he is still unsatisfied with the review result, then he can sue the opposite. CTMO will make the judgment by default if opposee did not submit “Application for Trademark Opposition” within 15 days.
USA A party must file its opposition, or a request to extend its time to file an opposition, within thirty days of the date the mark is published in the Gazette. The TTAB will judge the opposition after the opposee responses to the TTAB. If any party is unsatisfied with the judgment, he can apply for review or appeal to the United States Court of Appeals for the Federal Circuit.

Use of Registered Trademark

China Registered trademark can mark “注册” or ® in the top right corner or bottom right corner of the trademark. But it is not necessary.
USA The United States Trademark Law stipulates that registered trademark must mark “Registered” or ®.

Trademark Renewal

China 6 months before the validity expires, the owner should apply for renewal if he still wants to own it. If no application has been filed at the expiration, there is a grace period of 6 months.
USA The owner should apply for renewal during 6 months before the validity expires and 3 months after the validity expires. If no application has been filed at the expiration, there is a grace period of 3 months.

Class of Goods/Services in Application of Trademark

China a. Basically, no more than 10 items of goods or services should be contained in one application. If there are more than 10 items in one application, the owner must pay additional fee for each goods/services in excess of 10.
b. One application applies for registration of one trademark in one class.
USA a. There is no limitation on the number of items while filing for registration of trademark.
b. One application can contain various Classes or one Class only.

China vs UK

Trademark Registration Category

China Good Mark, Service Mark, Collective Mark, Certification Mark
UK Good Mark, Service Mark, Collective Mark, Certification Mark, Series of Marks

Constituent Elements of Marks

China Word, picture, device, letter, three-dimensional picture and color, or any combination.
UK Word, name, device, letter, colors, flavors, sound, product packaging, appearance design, or any combination.

Royal Mark Registration

China None
UK Unless with the permission of British Queen, or Royal members under some circumstances, these kinds of marks can’t be registered:
  • Royal emblems or their main symbolic parts, or other similar emblems or devices that easily confusable;
  • The emblems of Royal Crown or Royal Flag;
  • The portraits of British Queen or any Royal members, or the marks similar with that;

Any word mark or device mark that may mislead the public into thinking the registrant has been protected or authorized by the Royalty.

Right of Priority in Trademark Registration Application

China Right of priority can not be assigned.
UK Right of priority can be assigned with or without the application.

Class of Goods/Services in Application of Trademark

China Basically, no more than 10 items of goods or services should be contained in one application. If there are more than 10 items in one application, the owner must pay additional fee for each goods/services in excess of 10.
One application applies for registration of one trademark in one Class.
UK There is no limitation on the Class while filing for registration of trademark.
Additional fee should to be paid which started from the second Class that applied for. The additional fee for each class is equal with 25% of the official fee of the first Class.

Trademark Examination & Revision

China File the Revision within 30 days after received the Notice from the CTMO.
UK File the Revision within 2 months if omit any class or registration fee.

The Law Protection for Trademark

China Only the registered trademarks are under the protection of the trademark law.
UK The unregistered trademarks are under the protection of the “Act of Prohibition on Counterfeit goods” (the common law), and the registered trademarks are under the dual protection of both the common law and the statute law. Therefore, the treatments for the owners of the unregistered and registered trademarks are totally different: the former one would have the right to sue only if his goods are counterfeited by others, and the latter one would have the right to sue as long as his trademark is illegally used by others, no matter for counterfeiting goods or for other situations (such as illegally advertising use or illegally import and export with the goods which the registered trademark is printed on).

Non-renewed Trademarks

China The trademark will be invalid due to trademark cancellation.
UK The trademark will be invalid. In the following 6 months, anyone can apply for recovering trademark registration through paying the renewal fees or recovery fees. The trademark will be recovered and publicized if the examiners pass the application.
The trademark can be used to prevent others from registering the same trademark within 1 years after its registration, if it is canceled due to not paying the renewal fee but it is used within 2 years before its cancellation.

Trademark Cancellation

China Cancellation due to none use for 3 consecutive years.
UK Cancellation due to none use for 5 consecutive years.

Trademark Opposition

China The opposer can either reply or not within 30 days after receiving notice of defence. The CTMO will make judgment of the opposition.
UK The applicant must file written pleadings in duplicate after receiving copy notification of opposition reasons. The protestant must file the relevant evidences in the form of legal declaration to the examiner and file the copy document to the applicant within 3 months (the period can be delayed) after receiving the reply of applicant.

China VS Germany

Trademark Registration Category

China Good Mark, Service Mark, Collective Mark, Certification Mark
Germany Good Mark, Service Mark, Collective Mark

Class of Goods/Services in Application of Trademark

China Basically, no more than 10 items of goods or services should be contained in one application. If there are more than 10 items in one application, the owner must pay additional fee for each goods/services in excess of 10.
One application applies for registration of one trademark in one Class.
Germany There is no limitation on the number of class in one application.
The applicant should pay the fee according to the number of class.

Right of Priority in Trademark Registration Application

China The applicant of Priority should make a statement when applying for the mark.
Germany The applicant of Priority should make a statement within 2 months after application of trademark registration.

Review on refused trademark application

China The applicant can file for review to Trademark Review and Adjudication Board of State Administration for Industry and Commerce within 15 days after receives the rejection. In case the applicant refuses to accept the decision, he can sue to Intermediate People’s Court of Beijing within 30 days after receives the decision.
Germany The opponent can make lawsuit directly to the Bundespatentgericht (Federal Patent Court) within 1 month after the receiving the rejection. In case the applicant refuses to accept the judgment, he can sue to federal Supreme Court within 1 month after receives the judgment.

Trademark Renewal

China 6 months before the validity expires, the owner should apply for renewal if he still wants to own it. If no application has been filed at the expiration, there is a grace period of 6 months.
If no application has been filed at the expiration, the trademark will be canceled.
Germany The owner can apply for renewal within 2 months after the validity expires. If renewal fee has not been filed during this period, he will receive a ultimatum of penalization and be fined.
If renewal fee hasn’t been paid at the expiration of 6 months or a month after the ultimatum, the trademark will be canceled.

Trademark Cancellation

China Cancellation due to none use for 3 consecutive years .
Germany Cancellation due to none use for 5 consecutive years;
If the owner of registered trademark use the mark after noun use for 5 consecutive years and no appeal is raised within 6 months, the mark can not be canceled due to noun use for 5 consecutive years.

China vs Australia

Principle of Registration

China Good Mark, Service Mark, Collective Mark, Certification Mark
Australia Good Mark, Service Mark, Series of Marks, Collective Mark, Certification Mark, Defensive Mark, Color Trademark, Three-Dimension Mark, Scent Mark, Sound Mark

Constituent Elements of Marks

China Word, device, letter, number, three-dimension symbol and color combination, or any combination.
Australia Letter, word, name, signature, number, device, sign, tag, label, packing design, shape, color, sound or scent.

Right of Priority in Trademark Registration Application

China The applicant of Priority should make a statement when applying for the mark, and file a copy of the first registration application in 3 months.
The items that will be filed in China should consist with the applied items overseas. The quality can be equal with or less than the applied item. Extra items should make an additional application.
Australia The applicant who applies for a priority must submit the formal statement of priority while filing the application or within two workdays after application.
All the items and extra items enjoy the priority when filing the priority application.

Trademark Examination & Revision

China File the Revision within 30 days after received the Notice from the CTMO.
Australia File the Revision within 15 days after the Notice issued; Adjournment can be made without any statement for 6 months with extension fee. There should be a statement with convincing reasons after 6 months.

Power of Attorney

China Any party, who authorizes trademark application or any other service to trademark agency , should submit Power of Attorney to the China Trademark Office.
Australia Authorizing trademark registration to Australian attorneys don’t need power of attorney.

Class of Goods/Services in Application of Trademark

China Basically, no more than 10 items of goods or services should be contained in one application. If there are more than 10 items in one application, the owner must pay additional fee for each goods/services in excess of 10.
One application applies for registration of one trademark in one class.
Australia Multi-class applications are available in Australia. And it is possible to file for a series of marks if the marks resemble each other in material particulars and differ only in respect of statements or representations as to goods or services, statements or representations as to number, price, quality or names of places, or the color of any part of the trade mark.

Trademark Renewal

China 6 months before the validity expires, the owner should apply for renewal if he still wants to own it. If no application has been filed at the expiration, there is a grace period of 6 months.
Australia 1 year before the validity expires, the owner should apply for renewal if he still wants to own it. If no application has been filed at the expiration, there is a grace period of 12 months.

Expedited Examination of a Trademark Application

China The applicants have to queue to pending examination.
Australia It is possible to request expedited examination of a trademark application, and commonly this is done when the mark is filed. With the request, it is necessary to submit a statutory declaration which gives the reasons for the request. Typically, such a statutory declaration simply states that for commercial reasons it is necessary for the applicant to have its rights determined, and for that reason expedited examination is requested. And there is no official fee for requesting expedited examination.

Trademark Oppositions

China Any party must file its opposition within three months of the date the mark is published in the Gazette.
Australia It is possible to file an application to extend the opposition period (by a maximum period of 3 months) after 3-month Gazette, but only one such extension application is available on only limited grounds, which are stated in the legislation.

Examination for Opposition

China Opposition applications usually filed by opposer with relevant materials, and later would be asked to review the opposition by CTMO. After CTMO examined the paperwork of the applicant answers, they will made the judgments. It is the written compliance system.
Australia Registration Officer should fully listen to the reviews from both sides and provide the hearing rights for them.

Review on refused trademark application

China The applicant can file for review to Trademark Review and Adjudication Board of State Administration for Industry and Commerce within 15 days after receives the rejection. In case the applicant refuses to accept the decision, he can sue to Intermediate People’s Court of Beijing within 30 days after receives the decision.
Australia The opponent can make lawsuit directly to the federal court after the registration office making the judgment.

Difference in Power Transition of Filing an Opposition

China Chinese Trademark Law did not rule whether the right of filing trademark opposition can be transferred.
Australia Australia Trademark Law makes regulation that the opponent can ask registration office for transferring trademark opposition rights to others when he applies the trademark opposition.

Trademark Ownership after successful Oppositions

China If the register applied for trademark opposition and the reasons are justified, he still need to file the registration in addition to get the trademark ownership back.
Australia The registers can get the trademarks back through trademark opposition.

China vs Canada

Constituent Elements of Marks

China Word, picture, figure, three-dimensional picture and color, or any combination
Canada
  • Word, except for the family names and given names of people who is alive or people who has been dead for less than 30 years;
  • Marks contain English or French. But in the aspects of meaning, Writing or pronunciation, the marks should not have specific description or deceptive expression of quality, character, origin, etc;
  • Uncorrelated marks of goods or services;
  • Marks which will not be confused with registered trademarks;

Marks which do not mean class, quality, function, value, origin or production date of the goods or services.

Royal mark registration

China None
Canada Unless with the permission of British Queen, or Royal members under some circumstances, these kinds of marks can’t be registered:
  • Royal emblems or their main symbolic parts, or other similar emblems or devices that easily confusable;
  • The emblems of Royal Crown or Royal Flag;
  • The portraits of British Queen or any Royal members, or the marks similar with that;

Any word marks of device marks that may mislead the public into thinking the registrant has been protected or authorized by the Royalty.

Class of Goods/Services in Application of Trademark

China Currently, China adopts the International Classification System, which classifies goods and services into 34 categories and 8 categories respectively. When 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. And basically, no more than 10 items of goods or services should be contained in one application. If there are more than 10 items in one application, the owner must pay additional fee for each goods/services in excess of 10.
Canada Canada does not have a formal Classification System, so you need not file registration separately in respect of each class of goods or service. Any class of goods or service can be listed in one application.

Madrid System

China As China is a member of Madrid Union, people here can register trademark through Madrid System.
Canada Canada has not joined in the Madrid Union, so people can not register through Madrid System.

Principle of Registration

China “First to file” principle
China Trademark Law is based on the “First to file” principle. The ownership of a trademark is depending on the legal registration. To put it simply, who register the mark, who is the owner of the mark.
Canada “First to use” principle, principal register and supplementary register
The trademark law in Canada is follow the principle of “first to use”-that means the precedent user is protected by the law. In Canada, the trademark law only protects the mark which has been actually used in business.

Trademark Oppositions

China A party must file its opposition within 3 months of the date the mark is published in the Gazette. The CTMO will judge the opposition after the opposee responses to the CTMO. If any party is unsatisfied with the judgment, he can apply for review within the following 15 days. If he is still unsatisfied with the review result, then he can sue the opposite. CTMO will make the judgment by default if opposee did not submit “Application for Trademark Opposition” within 15 days.
Canada A party must file its opposition within 2 months of the date the mark is published in the Gazette. If any party is unsatisfied with the judgment, he can directly sue to Federal Court.

Validity Period and Renewal of Registered Trademark

China 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 canceled.
Canada The period of validity of a registered trademark is 15 years, counted from the date of approval of the registration. For renewal, the period of validity of each renewal is 15 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 after the registration office sending renewal notice. Trademark renewal does not need any documents.

China vs Philippines

Constituent Elements of Marks

China Word, picture, figure, three-dimensional picture and color, or any combination
Philippines acronyms, logos, slogans, designs, figures, pictographs or portraits, three-dimensional picture and color, or any combination

Review on refused trademark application

China The applicant can file for review to Trademark Review and Adjudication Board of State Administration for Industry and Commerce within 15 days after receives the rejection. In case the applicant refuses to accept the decision, he can sue to Intermediate People’s Court of Beijing within 30 days after receives the decision. (All the timeline mentioned above cannot be postponed.)
Philippines Every applicant for the registration of a mark or other mark of ownership may, upon the final refusal of the Examiner to allow registration, appeal the matter to the Director. Appeal may also be taken to the Director from any adverse action of the Examiner in any matter over which these Regulations give original jurisdiction to the Examiner. A second adverse decision by the Examiner on the same grounds may be considered as final by the applicant, petitioner, or registrant for purposes of appeal.Any petition or appeal must be taken by filing the petition in duplicate or a notice of appeal, as the case may be, and payment of the required fee within 2months from the mailing date of the action appealed from, must specify the various grounds upon which the appeal is taken, and must be signed by the petitioner or appellant or by his attorney of record. The period herein provided shall, in no case, exceed the maximum period of 4 months from the mailing date of the action appealed from.

Trademark Oppositions

China A party must file its opposition within three months of the date the mark is published in the Gazette. The CTMO will judge the opposition after the opposee responses to the CTMO. If any party is unsatisfied with the judgment, he can apply for review within the following 15 days. If he is still unsatisfied with the review result, then he can sue the opposite. CTMO will make the judgment by default if opposee did not submit “Application for Trademark Opposition” within 15 days.
Philippines When no opposition is filed within thirty (30) days after the publication for opposition, the Director of the Bureau of Legal Affairs shall certify to that effect within 2 months from the date of release of the IPO Gazette , or within 15 days from the deadline of submission of the opposition if an extension was granted and the application is not deficient in any formal manner. The mark shall be deemed registered the date after the expiration of the aforementioned 30-day period for filing of opposition, or if the application is deficient in any formal matter, on the date the applicant has fully complied with the formal deficiencies.

Class of Goods/Services in Application of Trademark

China a. Basically, no more than 10 items of goods or services should be contained in one application. If there are more than 10 items in one application, the owner must pay additional fee for each goods/services in excess of 10.
b. One application applies for registration of one trademark in one class.
Philippines No limit of the number of classes that can be included under one trademark. However, must pay per class.

Declaration of Actual Use

China Not needed
Philippines The Office will not require any proof of use in commerce in the processing of trademark applications. However, without need of any notice from the Office, all applicants or registrants shall file a declaration of actual use of the mark with evidence to that effect within three years, without possibility of extension, from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the register by the Director motu proprio.

Payment Amount

China No difference in the scale of entity business.
Philippines Depends if you are classified as a small entity business or a large entity business. If asset amounts to 100 million or less, you will qualify as a small entity business. If over 100 million, you will qualify as a big entity business. The big entity business need to pay double fee.