Following the revision to the Chinese trade mark laws in May 2014, the intention of which was to create a fairer trade mark system for both Chinese and foreign brand owners, the China Trade Mark Office (CTMO) has taken further steps to encourage brand owners to protect their trade marks in China.
As of 15 October 2015, the CTMO has reduced the official fee for a trade mark filing. The official fee for filing an application for one mark in one class (covering no more than ten goods/services) will be reduced from RMB 800 to RMB 600. For each additional item of goods/services will be reduced from RMB 80 to RMB 60.
China has, in the past, proved to be a particularly problematic country for brand owners seeking to use and register their legitimate brands as it is common practice for unconnected third parties to appropriate the legitimate brand owners mark by filing an application with the CTMO before the brand owner does. Whilst this practice is still ongoing to an extent unfortunately, under the new trade mark laws the CTMO is trying to make it more difficult for unconnected third parties to appropriate marks which do not belong to them. It still remains the advice to clients to seek protection in China as a matter of priority if this is a country of interest to you. With the announced reduction in the official fees, it is hoped that this will further encourage brand owners to protect their marks and our team of trade mark attorneys will be happy to advise you further if protection in China is of interest to you.
Trade Mark Oppositions in China
Whilst writing on China, reports have been circulating that the CTMO has recently been demanding the filing of all supporting materials in the initial papers in oppositions, instead of allowing the usual three month supplementary period once the initial opposition has been filed. We have questioned this practice with a local firm of attorneys that we work very closely with in China and we are pleased to advise that these reports are incorrect.
In summary, it is still the case that if a trade mark opposition is based on an earlier Chinese registration or pending application, the three-month supplementing period is still applicable. However, if the opponent does not have a prior Chinese trademark application or registration, then it is necessary to file at least a minimum amount of evidence to prove that it has other prior rights (e.g., prior used mark with certain reputation, prior copyright, and prior personal name right) compared with the opposed mark in the initial papers. In such cases, further materials can still be filed in the three-month supplementing period.
We would however recommend to clients that irrespective of whether an application or registration is already on file in China, that you still take steps to start building up a library of evidence of your use of the mark in China. Creating such a library of evidence will serve to further strengthen your rights when looking to challenge any third party use or registration of a conflicting mark in China.
In addition, over time, if sufficient evidence of your presence and reputation in China has been collated, then you may also be able to make a request for your mark to be recognized as a “well-known” mark. Such requests can be made in the course of a trade mark opposition or an enforcement action and by the Trade Mark Review and Adjudication Board (TRAB). The benefit of your mark being recognised as a well-known trade mark in China is that you will be able to produce this as evidence of reputation in support of future oppositions, infringement and cancellation/invalidation actions. In addition, not only will the well-known mark provide you with an added layer of protection against a third party looking to use or register a conflicting mark in respect of the same goods/services to you but also with regards to dissimilar goods and services. Once recognised as a well-known mark, protection in China lasts for a three year period upon expiry of which, a new request for the mark to be recognised as well-known can be filed.