A trademark is a sign that identifies and distinguishes the source of the goods or services of one party from those of others. In market economy, trademarks play a significant role in guiding market business, boosting national economy and protecting consumers’ rights and interests.
Trademark Registration System
China implements the system of trademark registration. As provided in Article 3 of the Trademark Law, 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. The owner of a trademark shall apply to the Trademark Office for registration if he wants the trademark used in business to be fully protected by law.
Exclusive Right to Use a Registered trademark
Once a trademark is approved and registered, the trademark registrant is entitled to the exclusive rights to use the trademark, which includes:
1. Right to use the trademark: the trademark registrant is entitled to use the trademark in respect of the goods and service approved and use it in relevant business.
2. Exclusive right: the trademark registrant enjoys the exclusive right to use the registered trademark, no one else shall use identical or similar trademarks in respect of identical or similar goods and services.
3. Right to license; the trademark registrant is entitled to authorize other to use the registered trademark by signing a license contract in accordance with the law.
4. Restraining Power: the trademark registrant is entitled to prohibit any one from using identical or similar trademarks in respect of identical or similar goods and services without permission.
5. Right of mortgage: the trademark registrant is entitled to set a mortgage with the registered trademark in business.
6. Right to invest: The trademark registrant has the right to regard its registered trademark as the intangible assets and make the investment according to the due course of law according to the legal provisions
7. Right of assignment: the trademark registrant is entitled to assign the registered trademark to any one else in accordance with law, either paid or unpaid.
8. Heirdom: The registered trademark can be inherited by its rightful heir according to the order of inheritance as the incorporeal property.
Means of Trademark Application
Any Chinese natural person or legal entity intending to acquire the Exclusive Right to Use a Registered trademark can either come to the Trademark Office to apply for the registration or appoint any of such organizations as designated by the State to act as his or its agent for the registration. Any foreign person or foreign enterprise intending to apply for the registration of a trademark or for any other matters concerning trademarks in China sha1l appoint any of such organizations as designated by the State to act as his or its agent.
Which Signs can be Registered as Trademarks
As provided in Article 8 of the Trademark Law, in respect of any visual sign capable of distinguishing the goods or service of one natural person, legal entity or any other organization from that of others, including any word, design, letters of an alphabet, numerals, three-dimensional symbols, combinations of colors, and their combination, an application may be filed for registration. Meanwhile, it is also provided in Article 9 that Any trademark in respect of which an application for registration is filed shall be so distinctive as to be distinguishable, and shall not conflict with any prior right acquired by another person.
Who can Apply for Trademark Registration
As provided in Article 4 of the Trademark Law, any natural person, legal entity or other organization intending to acquire the Exclusive Right to Use a Registered trademark for the goods produced, manufactured, processed, selected or marketed by him or it, or for the service provided by him or it, shall file an application for the registration of the trademark with the Trademark Office.
Which Signs shall not be Used as Trademarks
As provided in Article 10 of the Trademark Law, the following signs shall not be used as trademarks:
1. Those identical with or similar to the State name, national flag, national emblem, military flag, or decorations, of the People's Republic of China, with names of the places where the Central and State organs are located, or with the names and designs of landmark buildings;
2. Those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries, except that the foreign state government agrees otherwise on the use;
3. Those identical with or similar to the names, flags or emblems or names, of international intergovernmental organizations, except that the organizations agree otherwise on the use or that it is not easy for the use to mislead the public;
4. Those identical with or similar to official signs and hallmarks, showing official control or warranty by them, except that the use thereof is otherwise authorized;
5. Those identical with or simi1ar to the symbols, or names, of the Red Cross or the Red Crescent;
6. Those having the nature of discrimination against any nationality;
7. Those having the nature of exaggeration and fraud in advertising goods; and
8. Those detrimental to socialist morals or customs, or having other unhealthy influences.
The geographical names as the administrative divisions at or above the county level and the foreign geographical names well known to the public shall not be used as trademarks, but such geographical terms as have otherwise meanings or are a part of collective marks/or a certification marks shall be exclusive. Where a trademark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid.
Which Signs shall not be Registered as Trademarks
As provided in Article 11, the following signs shall not be registered as trademarks:
1. Those only comprising generic names, designs or models of the goods in respect of which the trademarks are used;
2. Those having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademarks are used; and
3. Those lacking distinctive features.
The signs under the preceding paragraphs may be registered as trademarks where they have acquired the distinctive features through use and become readily identifiable.
As also provided in Article 28 of the Trademark Law, where a trademark the registration of which has been applied for is identical with or similar to the trademark of another person that has, in respect of the same or similar goods, been registered or, after examination, preliminarily approved, the Trademark Office shall refuse the application.
Trademarks and Service Marks
Trademarks are the trademarks used in respect of goods, while service marks are those used in respect of service. China began the acceptance of applications for service marks registration from June 1st , 1993.
Procedures for Trademark Registration
After the acceptance of the application for trademark registration, the procedures for trademark registration includes the following periods: formality check, substantive examination, being preliminarily approved and published, opposition and being approved for registration. The opposition period includes 3 months from the date of the publication, any person may, within this period, file an opposition against the trademark that has, after examination, been preliminarily approved. Where any party concerned is dissatisfied with the Trademark Office’s decision of refusal of the registration application, decision of opposition and decision of cancellation, he or it may apply for a review to the Trademark Review and Adjudication Board. Where any party concerned considers a registered trademark to be improperly registered, he or it may apply for cancellation of the trademark to the Trademark Review and Adjudication Board. Where any party concerned is dissatisfied with the decision of the Trademark Review and Adjudication Board, he or it may institute legal administrative proceedings with Beijing No. 1 Intermediate People's Court.
Period of Validity of a Registered Trademark
The period of validity of a registered trademark shall be ten years, counted from the date of approval of the registration. Where the trademark registrant intends to continue to use the registered trademark beyond the expiration of the period of validity, an application for renewal of the registration shall be made within six months before the said expiration. Where no application therefore has been filed within the said period, a grace period of six months may be allowed, yet extra fees shall be charged for the delay of renewal. If no application has been filed at the expiration the grace period, the registered trademark shall be cancelled. The period of validity of each renewal of registration shaIl be ten years.
Assignment and Licensing of Registered Trademarks
The right holder of a trademark has the right to deal with his/her intangible property in accordance with legal procedures. Trademark holders can dispose trademark right either by assignment or by licensing. Trademark assignment is the transfer of trademark ownership to another party voluntarily by the right holder, either paid or unpaid. And a trademark transfer caused by merger, annex or judgment by a court can also be viewed as trademark assignment. In that case, the assignee should handle assignment with the Trademark Office. After approval, an assigned trademark can be publicized on the Trademark Gazette. The assignee enjoys the exclusive right to use the trademark since the date of publication. The trademark licensing of registered trademarks is to allow others to use the trademarks without assigning the ownership. To license a registered trademark, the licensor shall sign a trademark license contract with the licensee. And the licensor shall report the contract to the Trademark Office to make a record of the contract within 3 months counting from the date on which the contract was signed.
Documents required for application:
1 Copies of Reproductions of the Trademark
2 Photo Copy of the Valid Credentials
A photo copy of the valid credentials which can verify the identity of applicant. [Copy of ID card of a natural person or license of a corporation].
3 Formal application documents
Cheuk Ying prepares the formal application documents for you to sign. The documents included the copy of the Application for Trademark Registration and the Power of Attorney.
The Power of Attorney of a foreigner or foreign enterprise shall also state the nationality of the principal.
Fees: RMB 2,000
Time required for the process: 2-3years
Period of Validity of Trademark: 10 years |
