Answers of the Tricky Questions on China Trademark Registration

We all know that registering trademark in China is the most important part of doing business over there. But the trademark related issues are very complex and first-hand understanding is needed to resolve any sort of trademark and patent issues. In this article, we are going to discuss some of the tricky questions on China trademark registration.

What is a three-dimensional trademark? Can it be registered in China?

Ans– A three-dimensional Trademark refers to a three-dimensional configuration, such as the shape of goods or their wrapping as well other packaging. China recognizes three-dimensional Trademarks. But, the three-dimensional Trademark must be distinctive, and cannot be the natural shape of the product or the shape necessary to achieve the effect of the technique.

What is “First to File” trademark registration system?

Ans– Unlike the United States and other European countries, in China there is no prior-use or intent-to-use requirement needed before registering a trademark nor are common law rights recognized. China recognizes a “first to file” system, which generally means that the trademark right belongs to the first person who properly registers the mark in China.    In other words, any party, whether or not it intends to use the mark in the stream of commerce, may register a trademark in China.

Which Chinese authority is responsible for handling the applications of trademarks?

Ans– Submit the application form and other relevant documents. In China, SAIC (State Administration for Industry and Commerce) is responsible to handle the applications of trademarks.

Can trademarks without the purpose of use be terminated?

Ans– Trademark squatting is a major issue in China. One of the greatest challenges that many foreign companies face when entering the Chinese market, is that their brand has already been registered as a trademark by a Chinese company. In order to tackle this problem, Chinese authorities have taken a few effective steps and made changes in the trademark law. The “purpose of use” added in Article 4 of the revised Trademark Law is the basic stone for all legal norms to curb the application for registration of malicious trademarks. According to the revised Trademark Law, applicants should be required to submit evidence of “actual use” or “honest use intention” at the time of registration of the trademark application.

Time scale required for registering trademark in China?

Ans– Currently it takes around eighteen to tweenty four months to get a trademark registered in China.

What is the renewal period of trademark in China?

Ans– A trademark in China is valid for ten years from the date of registration. A request to renew the registration must be filed within twelve months prior to the date of expiration. A grace period of six months is allowed by paying a corresponding surcharge. A trademark may be renewed each time for a period of ten years.

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Strategic Advantages of Registering Trademark in China

Often foreign companies pay less attention to registering their trademark in China. It is important to remember that China does not provide protection for unregistered trademark under the common law. The value of China trademark registration is immense and the foreign firms having business interest over here simply cannot overlook the need for registering trademark in China.

Protecting a company’s trademark is a strategic move in the long term and should be carefully considered. The trademark search is based on the public trademark database of CTMO, any search activities that processed in China are all based on that database. This database is comprised of all active and many inactive marks that were either applied-for or registered pursuant to the current Trademarks Act or former trade-mark legislation of China. The database includes additional words and designs which are not by definition trademarks, but that is protected by the Trademarks Act or other related legislation.

Protect Trademark Infringement with the Chinese Character Trademark

Unlike the US, China follows the ‘first to file’ system rather than the ‘first to use’. US companies work under the impression that by simply registering their trademark in the United States will be automatically recognized in China as well. Your takedown request will not be granted if you only registered it in the US or other foreign jurisdiction. You need to have a Chinese character trademark of your company while doing business in China.

Registered trademark helps to enter into a licensing agreement

Trademark has a value not only to the owner due to its distinctiveness but also to customers who associate this trademark to a specific product or service. Moreover, if a foreign company wants to enter into a licensing agreement with a Chinese distributor, the foreign firm has to register trademark in China first. Most of the renowned Chinese distributors will only form business relationship with the overseas enterprises whose trademark is registered in China.

Trademark registration drives business value

Trademarks provide value beyond your core business. Trademarks can appreciate in value over time. The more your business reputation grows, the more valuable your brand will be. A trademarked name marks all of your products and services as yours and no one else’s and can also protect you from counterfeit products. Trademarks in China are valid for 10 years from the date of registration. Requests to renew must be filed within 6 months prior dates of expiration.

In China, the protection of the exclusive right to use a trademark is based on registration. Registration can be obtained either by filing an application directly at the CTMO (Domestic application), or by filing an application at the World Intellectual Property Organisation (WIPO) on the basis of a trademark registered or applied in another country than China.

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