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Trademark Applications in China vs. International Trademark Applications

19 January 2017

wKhQoVb8oCSEarR1AAAAAP6weZE142When evaluating the opportunities for doing business in China, most entrepreneurs are aware of the fact that the company’s intellectual property rights will be exposed to a precarious legal environment that undergoes considerable changes to this day. However, what are the most important things to consider when registering your trademarks for the Chinese market? In this article we will provide some more detailed information on the trademark applications process in China and such registrations in the context of a worldwide trademark application.

Please note that China applies a ‘first-to-file system’: the owner of the trademark shall be the first (legal) person to file its application with the Chinese Trademark Office (“CTMO”). Unlike in some Western countries where one may gain trademark rights by usage alone, in China it is fundamental to register a trademark even before you engage in any business activity.

There are two ways of obtaining registration for a trademark in China: either by filing an application directly at the CTMO (“National Application”) or by filling an application at the World Intellectual Property Organization (“WIPO”) (“International Application”) on the basis of a trademark registered or applied in another country than China.

 The National Application contains three stages:

 1. A formal examination where the CTMO verifies that the trademark file is complete and the corresponding fees have been paid.

 2. A substantial examination where the examiner verifies that all the other requirements, absolute grounds (i.e. legality, non-functionality and distinctiveness) and relative grounds (i.e. availability), are met. Once the trademark has passed this examination, the trademark is preliminarily approved for registration.

 3. The publication in the official Trademark Gazette. The publication date marks the start of a three-month period during which third parties may file an opposition with the CTMO. If no opposition is filed (or if an opposition is filed but fails), the trademark is duly registered and the period of validity of the trademark (i.e. 10 years) starts at the end of the 3 months’ opposition period.

 The time between date of filing and preliminary approval and publication should be approximately 12 to 18 months unless an opposition to the registration is filed.

 Just like the National Application, the International Application also contains three stages:

 1. An application through your National or Regional IP Office. Indeed, before you can file an International Application, you must have already registered, or have filed an application, at your “domestic” IP Office. You then need to submit your application through this same IP Office, which will certify and forward it to WIPO.

 2. A formal examination by WIPO. WIPO only conducts an administrative examination of your application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected. It is important to note that whether your trademark will be successfully registered is only determined after the internal application procedures of the IP Offices in the territories which you selected, as outlined in the next stage.

 3. Substantive examination by National or Regional IP Offices. The IP Offices of the relevant territories will make a decision within the applicable time limit (12 or 18 months) in accordance with their local regulations. WIPO will subsequently record the decisions of the IP Offices in the International Register and notify you.

 Now we have described both application processes in more detail, we will explain why you should consider filling a National Application directly with the CTMO in China instead of through the above-described International Application.

 A. Although International Applications are relatively straightforward, they often lead to rejections that could have been avoided with a National Application, as typically no pre-application screening is performed. For instance, the CTMO will reject an International Application when the registration is in conflict with an existing trademark. This could have been avoided with a National Application, as a local trademark attorney should have identified such conflict beforehand, saving valuable time (i.e. please note that the notice of rejection may be issued more than one year after the initial application).

 B. Even though the trademark has been officially registered in China through an International Application, troubles about enforcing the applicant’s rights may surface. Once registered, the only formal certificate for ‘international trademarks’ is the one issued by WIPO. Theoretically, there should not be any problems because the WIPO certificate should be sufficient to enforce the applicant’s trademarks rights under Chinese trademark law. But in practice, the Chinese authorities and Chinese business partners often do not recognize the certificate issued by WIPO and demand a copy of a certificate issued by CTMO.

 C. The majority of foreign companies that operate within the Chinese market use their Chinese name for marketing purposes, as their western name is difficult to recognize for their local audience. For example, Volkswagen uses its Chinese equivalent ‘大众汽车’. The registration of the Chinese name can only be done through the National Application.

 R&P China Lawyers’ trademark attorneys would be pleased to assist your company with any guidance relating to your trademarks in China.