By Sun Jin(Marlow), Partner, Chinese attorney at law, of Zhejiang Xinmu Law Firm, April. 30, 2010
 

According to our before articles, we know that register our trademarks in China is the most important and a necessary method to protect our trademark exclusive rights which are a type of IPR in China, no matter whether it had been registered or not outside of China. Here we mainly explain how to register our trademarks in China.

I. Who can register their trademarks in China?

All companies and individuals with the nationality of a member nation or region of Paris Convention can register their trademarks in China. For a company or individual who does not have the nationality of a member nation of Paris Convention but does have a valid commercial domicile or a permanent residency in China, it can also register its trademarks in China.

The full name of Paris Convention is Paris Convention for The Protection of Industrial Property, and this Convention had 171 nation and region members in Sep. 1 of 2007. China is a member nation of Paris Convention.

II. How to run the procedure of registration?

Generally we have two methods, if the applicant, for both a company and an individual, is applicant who has China nationality. First is appointing a China local trademark agency authorized by the State Administration of Industry and Commerce of China to deal with the application, including jobs of preparing files and delivering of files, second is dealing with the application by the company or the individual itself. Of course, for both methods, the owner of the trademark is the applicant which will not be affected.

If the applicant is a foreign company or individual who has the nationality of a member national of Paris Convention but who does not have any commercial domicile or regularity residency in China, then he must appoint one China local trademark agency authorized by the State Administration of Industry and Commerce of China to deal with the application for the applicant. If the foreign applicant has at least one commercial domicile or regularity residency in China, then the applicant can apply for the trademark directly with no need to appoint one agency.

If the applicant will file its trademarks by itself directly, he needs to go to Beijing to deliver his documents of registration directly. Yes, the applicant must go to or entrust one attorney to go to Trademark Registering Hall which is located in Beijing to deliver the documents face to face, but can not deliver the documents via mail.

If the applicant will appoint one trademark agency, then it will be much easier, just gives the trademark to the agency and tell him in which categories the trademark will be registered, and also signed the appointment document, then the agency will do the rest jobs.

III. Where to register the trademarks?

Applicants must register their trademarks in Trademark Bureau which is a subsidiary of the State Administration of Industry and Commerce of China, its address is: No. 8, Sanlihe East Road, Xicheng District, Beijing, China, this is also the address of Trademark Registering Hall.

IV. How long time will it take and will it be valid?

1. Time needed for one registration

Registering a new trademark will take about 1.5-2 years, from delivery of apply forms till getting the trademark registration certificate granted by the State Administration of Industry and Commerce of China. In details, from bureau’s acceptance of applications to modality censor will take one month, substance censor will take one year, objection period will be three months, approval and publishing will take further two months.

2. Valid period of one trademark registration

Valid period of one registration is 10 years, however may renew it for further 10 years again and again. Need to renew the trademark certificate in the 6 months before expiry date.

V. How much money will it cost?

1. Related regular government fees

Registration fee, CNY1000 each application.

Renew fee, CNY2000 each certificate.

2. Service Charge of the trademark agency

Generally the trademark agency will charge by numbers of applications, it will depend on quotation of the agent. Generally the charge will be CNY4,500~CNY9,000 each application.

VI. The procedure of registration

Trademark enquiry pre-registration (not a must) →preparation of registration documents →delivery of registration documents to acceptance window in trademark registration hall in Beijing → print the acceptance bar codes →pay the regular registration fee to the payment collecting window → Trademark bureau will send the Official Notice of Acceptance within around three months → applications to revisions of registration documents (not a must).

After getting the Official Notice of Acceptance from Trademark bureau, you can just leave it aside and wait. If the trademark or a similar trademark is found to be registered in China already, then the Trademark Bureau can decide to reject your applications. In this situation, you can apply for a re-examine procedure, and if you are still not satisfied with the award of the re-examine, you can raise trademark litigation, claiming that you are the rightful owner of the trademark, and you should be entitled to register this trademark in China, and so on.

To make sure that your trademarks are not registered in China, you’d better to do the Trademark enquiry pre-registration procedure which will cost you CNY60~240 each application, so as to avoid the possible waste of time and finance. Plus, as a matter of fact if you can read Chinese, you can also make the enquiry online, which is free, the problem is, the online trademark database might not be the latest one which may in lack of several months’ database of latest trademarks.

VII. Definitions of categories and applications

For all items and services which could be trademarked we have a list while in the list totally we have totally 45 categories, and under each category we will have some groups. Only one application is allowed in each group for one trademark, and thus only one trademark certificate will be given in each group for one trademark sometimes the similar trademarks are under protection as well.

The list is also an international convention with a full name of Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, latest is 8th version, when the list in Chinese which we are using in our trademark registrations in China was translated from Nice Agreement latest version.

 
     

 

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