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Trademark application in China

Trademark registration is therefore essential for enterprises looking to do business in China and protect their intellectual property. China represents a large and lucrative economic market, but one that also faces significant challenges with illegally used trademarks. However, many foreign investors are unfamiliar with the process of registering a trademark in China, and the legal requirements and procedures involved. Viet An Law Firm hereby would like to provide the following article on trademark application in China to give professional guidance and support to clients.

Trademark application in China

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    Legal basis

    • Chinese Trademark Law 2019;
    • Madrid Protocol 1989.

    Conditions for trademark registration in China

    To register a trademark in China, the following conditions must be met:

    • Trademarks must not violate the absolute bases of trademark protection. For example, do not fall into cases of submitting registration with malicious intent, label samples infringing on unregistered signs such as state agency badges;
    • The trademark has characteristics to distinguish between goods and services;
    • The trademark must not infringe on the rights of previously established trademarks, well-known trademarks, or previously filed trademark applications;
    • Trademarks must not conflict with the pre-established intellectual property rights of applicants.

    Classifying of goods and services for trademark application in China

    When registering for trademark protection in China, you must register the class of goods and services you wish to protect. Classifying the class of goods and services when registering a trademark plays an important role in determining the scope of trademark protection. Similar to Vietnam, currently, goods and services will be grouped based on the Nice Classification. After that, the above goods and services continue to be classified (Sub-classes) based on the classification issued by Chinese competent authorities.

    Process of trademark registration in China

    Step 1: Select a trademark sample and research the trademark

    Choosing a trademark model, especially for letter symbols, is very important in China – a country that uses hieroglyphs and foreign languages ​​that need to be transcribed and translated into Chinese when registering to avoid domestic entities using translations of those trademarks as their trademarks. Therefore, one of the most effective trademark design strategies is to combine literal translation and transliteration to appear on the trademark sample upon registration.

    After designing and classifying goods and services for the trademark, the applicant should search for the protection of the trademark to ensure the effectiveness of the registration procedure. Although this is not a mandatory procedure, if not done, the applicant may face a high risk of having the application refused, causing costs and money for the applicant.

    China also currently uses the latest version of the Nice Classification as a basis for classification when registering trademarks.

    Note: In-depth search results are for reference only and are not a basis for granting or not granting a title at the time of searching.

    Step 2: Submit a trademark application

    Foreign applicants who do not have a residence or business location in China can choose one of the following two forms:

    • Apply directly to the China National Intellectual Property Administration (CNIPA) through a legal intellectual property representative in the country, or;
    • Apply through the Madrid system of the World Intellectual Property Organization (WIPO). If this option is chosen, the underlying trademark application must originate from member states of the Madrid Protocol or Agreement.

    Step 3: Formality examination

    Since 2019, the formality examination time has been shortened by half compared to before. Accordingly, within 01 month from the date of filing the application, the Chinese trademark registration agency will issue a Notice of formality examination (This Notice is the Notice of valid application acceptance if the trademark registration dossier is no formal errors).

    Step 4: Substaintive examination and publish it in the industrial property gazette

    The application will be published in the CNIPA trademark gazette in Chinese (https://cas.sbj.cnipa.gov.cn/) or published in the WIPO weekly gazette if filed through the Madrid system.

    However, the gazette publication time may be different between application forms. For applications through Madrid, the application will be published before substantive examination. For applications filed under the national system, the application will not be published until it has been preliminarily approved as not violating the absolute and relative basis of the preliminary examination of the trademark. This period will be significantly longer.

    Objections of third parties must be filed within 3 months from the date the application is published in the CNIPA gazette or 3 months from the first day of the month immediately following the month of WIPO publication. Based on the opposition and related responses, within 12 – 18 months, CNIPA will decide to approve, partially reject, or completely reject the trademark application.

    Step 5: Grant of protection title

    If no opposition is filed within the above deadline, or the opposition is dismissed, CNIPA will officially approve the application and issue a Trademark Registration Certificate (electronic version).

    Note:

    • The above deadline does not include the time to supplement missing official dispatches (if any) and complaints during the application process (official dispatches or complaints must be certified by the Chinese trademark registration agency).
    • In addition, the deadline also depends on the examination process of the Chinese trademark registration agency, and the time it takes for the applicant to amend or supplement formal shortcomings of the application or there is a dispatch complaint against the Notice of unreasonable substantive examination of the Chinese trademark registration agency.

    Thus, according to the newly issued law, the average time for processing trademark applications in China is about 11 months (not including the time for amending and responding to objections arising during the handling process). This time is considered quite fast compared to many countries, meeting the need for large trademark registration in this country.

    Dossier of trademark application in China

    The dossier of trademark application in China includes the following documents:

    • Trademark registration declaration in China (prepared according to the form issued by CNIPA); In China, a registration application declaration can contain up to 3 classes of goods and services associated with a trademark.
    • Trademark sample of goods and services trademark which intended to be registered;
    • Detailed list of goods, goods, and services enclosed with the trademark;
    • Documents on the information of the owner of the trademark application, including a certified copy of the application owner’s Enterprise Registration Certificate, name and address of the application owner;
    • Documents confirming priority rights (if any);
    • Records for collection of trademark registration fees;
    • Notarized power of attorney (in case of filing through an intellectual property representative);
    • Other documents (if any).

    Note: Language used for the trademark registration dossier:

    • Can be English, French, or Spanish if submitted through the Madrid system;

    Mandatory in Chinese if submitted directly to the Chinese national registration office.

    Some related questions

    How much is the trademark registration fee in China?

    In addition to the representative service fee regulated differently by each organization, in China, the registration fee for a class (maximum 10 goods and services in a class), including state fees and lawyer fees.

    In addition, the applicant must pay additional fees for responding to objections, complaints from third parties, searching the trademark, using intellectual property representation services, and notarizing documents on request, translating, expressing delivery of documents, and other services related to the dossier.

    How long is the validity of trademark registration?

    The trademark protection title is valid for 10 years from the date the registration application is approved. The extension can be performed within 06 months from the expiration date until the end of the grace period no later than 6 months from the expiration date.

    Note: After having the protection title, if the owner does not use the trademark within 03 consecutive years, the protection title will be revoked.

    Service of trademark application in China of Viet An Law

    • Consulting on issues related to filing trademark applications.
    • Prepare and submit trademark registration dossiers in China or through the Madrid system;
    • Monitor the application handling process and respond to the registration agency, regularly update the status of the application owner;
    • Consulting on the trademark usage after being granted;
    • Draft the dossier to apply for an extension of protection title;

    Clients who need to carry out trademark applications in China, please contact Viet An Law Firm for the best support.

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