In an effort to further encourage entrepreneurship and innovation whilst enhancing the business environment in China, the Minister of Finance announced that, with effect from 1 April 2017, there will be a 50% reduction of official fees in relation to trade mark matters, including filing applications, renewals, recordals, opposition, cancellation and appeals etc.
The number of trade mark filings in China continues to rise, increasing by 28.4% to about 3.7 million in 2016. Naturally, a significant increase in new filings is anticipated as a result of the benefit of the lower official fees.
Already, the recent numbers from SINA (China IP Office) are mind-boggling:
- Trade mark applications filed in 2016: 3.7 million
- Trade mark applications approved for registration in 2016: 2.3 million (increased by 1.3%)
- Provisionally / partially refused trade mark applications in 2016: 1.2 million (increased by 36.7%)
- Trade mark opposition applications filed in 2016: 57 thousand (decreased by 3.1%)
Trade mark owners who have entered, or are planning to enter, the Chinese market should bear in mind that China follows the first-to-file system. Whilst the law protects unregistered marks where the mark has been used and enjoys a certain reputation or is recognised as a well-known mark in China, the test is a difficult one. However, the recent JORDAN judgement gives hope to owners of well-known marks.
A Chinese company, Qiaodan Sports Co, adopted, and began using a Chinese character version of the English-language name “Jordan” (the Qiaodan trade mark) in relation to sports clothing. The first two attempts (through the Trade Mark Review and Adjudication Board and then the Beijing High People’s Court) to have the Qiaodan trade mark cancelled both failed on the basis that JORDAN was not sufficiently well-known in China. The latest appeal to the Supreme People’s Court in China ruled that the Qiaodan trade mark should be cancelled as JORDAN is recognised in China as referring to Michael Jordan and his various JORDAN branded goods.
The path of proving that a trade mark is well-known in China is neither easy nor straightforward. It is therefore imperative to have your valuable trade marks registered in China as soon as possible.