Registration of Trademark in China and Hong Kong
The key to protecting a trademark in China is actually very simple: register it in our company.
Trademarks are often the most valuable assets of an enterprise, so protecting and enforcing the trademark rights of foreign businesses in China is critical to the success of your industry, as it is the primary legal care for your business in China. In order to expect protection, the clients must register their trademarks in China. Prudent enterprises do this before officially going in.
Since joining the World Trade Organization (WTO), China has strengthened its legal framework and amended its IPR and related laws and regulations to comply with the WTO Agreement on Traded-Related Aspect of Intellectual Property Rights (TRIPs). Though China is a party to international agreements to protect intellectual property (including WIPO, Bern Convention, Paris Convention, among others), foreign clients must register their trademarks with the appropriate Chinese agents and authorities in order for those rights to be enforceable in China. China’s trademark law was first adopted in 1982 and subsequently revised in 1993 and 2001. The new trademark law came into effect in October 2001, with implementation of regulations taking effect on 15 September 2002. The new trademark law extended registration to collective marks, certification marks and three-dimensional symbols, as required by TRIPs Agreement. China joined the Madrid Protocol in 1989, which requires reciprocal trademark registration for member countries.
China employs a centralized trademark registration system, the China Trademark Office (CTO), within the State Administration of Industry and Commerce (SAIC), which is responsible for the registration and overall administration of trademarks. The local counterparts of SAIC, the Administration of Industry and Commerce (AICs) have established trademark offices to handle trademark administration and enforcement at local levels. The Trademark Review and Adjudication Board (TRAB) within SAIC is responsible for handling trademark registration disputes. The first-to-file and single-class system for trademark registrations apply in China, which means that the owner of a trademark in a foreign jurisdiction has no priority in China unless and until it has filed its marks. The exception is “well-known” foreign trademarks, such as Coca-Cola or McDonalds or similar ones, though the applicability of this category is limited to only the largest and most famous of marks. The same trademark, if used for different products, should be registered in a number of appropriate classes. If the application proceeds smoothly then it will take approximately a year to fully register the trademark in China and 6 months to register the trademark in Hong Kong.
Although registration is highly recommended it is only mandatory in the case of trademarks used on specific goods such as pharmaceutical and tobacco products, which must be sold bearing registered trademarks. Foreign clients must use authorized local trademark agents in seeking trademark registration and handling other trademark related matters according to existing China Trademark Act.
The rapid growth of China in production, income, and spending has spurred commensurate growth in demand for overseas products and services. Risine numbers of middle and upper middle-class consumers are increasingly interested in overseas products and services. Meanwhile, China, with its huge population of about 1.3 billion, is an attractive market to many foreign businesses. Those who want to join in the bandwagon to market their products in China should seriously look into trademark protection in China. In the last decade a growing number of foreign clients have found their way to China, both as a market for their products and for production or assembly. Partly due to a lack of reliable and unbiased information about Chinese laws and the enforcement of trademark laws, regulations and related rules, a major concern for many foreign clients is how to effectively protect their trademarks when entering the Chinese market.
Trademark registration in China is a relatively easy process. Problems can arise if your trademark has already been registered in China by unscrupulous people or squatters. Once someone registers your trademark in China, they have the power to stop you using your own trademark in China. There are actually a number of people in China who make a living by preemptively registering foreign trademarks and then selling a license to that trademark to the original license holder for a surprisingly high price. Furthermore, the result is not prescient!
Defensive prevention is the best solution to squatting, so registering your trademark early in China in more coverage. On the basis of our experience, other scenarios, such as launching litigations or buying back the trademark you created, are both time and cost consuming thing to take back absolutely.
The exclusive right to use a registered trademark in China is limited to the classes in which the trademark is registered. While using the registered mark, the registrant shall not change its appearance or details without the permission of the China Trademark Office. A new application shall be made whenever there is an alteration to the registered trademark, or an extension of the goods designated.
Where a registered trademark is used, the characters of the registered trademark may be indicated on goods, packages of goods, description of goods or other ancillary items. The registered mark may also use the ® symbol, which shall be placed on the upper-right or lower- right hand corner. Once you are registered, your protection is legally extensive. Whether it is at the shores of your country or China, you can request that the appropriate authorities seize and punish any copycats, even leading to their conviction.
China’s trademark requirements are actually quite similar to those in most other countries. The trademark must not conflict with an existing Chinese trademark and it must be distinctive. China allows for registration of all marks for goods, services, collective marks and certification marks. As provided in Article 3 of the Trademark Act of China, registered trademarks refer to trademarks that have been approved and registered by the Trademark Office, and the trademark registrants shall enjoy the exclusive right to use the trademarks, and be protected by law.
Trademark applications that pass a preliminary screening are published by the China Trademark Office and subject to a three month period for objection. If there are no objections within this three month period, or in the event that the China Trademark Office rejects the objections as frivolous, the trademark is registered. If the China Trademark Office supports an objection, it will deny the application. Denied applications may be appealed to TRAB and then to the People’s Court. Generally speaking, objections to trademarks are rare.
The period of validity of a registered trademark shall be 10 years, and is counted from the date of approval of the registration.Where the trademark registrant intends to continue to use the registered trademark beyond the expiry of the period of validity, an application for renewal of the registration shall be made within six months before the said expiry. Where no application has been filed within the said period, a grace period of six months may be allowed. However, extra fees shall be charged for delay in renewal. If no application has been filed on expiry of the grace period, the registered trademark shall be cancelled. The period of validity of each renewal of registration shall be 10 years.
In the event of any expectations or landing in China, we are here gladly at your disposal and remain.