Introduction
Eligibility of applicant
Agent and recipient of documents
Date of application and registration
Goods and services
Examination period
Filing requirements for non-traditional trademarks
Possible actions in partial refusal
Opposition procedure
Registration certificate
Post-registration procedures
Information accessibility
Stability of registration


Introduction

Foreign entities or individuals seeking to register their trademarks in China have two options:

  • filing the application directly with the China National Intellectual Property Administration (CNIPA) – this is known as the "national route"; or
  • filing the application with the International Bureau of the World Intellectual Property Organization (WIPO) designating China, based on the Madrid Agreement and Madrid Protocol – this is known as the "international route".

Both options have advantages and disadvantages. This article sets out some guidance to help applicants make informed decisions.

Eligibility of applicant

National route
Any foreign entity or individual may file a trademark application in China, but the applicant's name and address must be translated into Chinese.

International route
Applicants filing Madrid applications should have a basic application or registration in a signatory state or organisation to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (article 2). The applicant should:

  • be a national of the signatory state;
  • be domiciled in the signatory state; or
  • have a genuine and effective industrial or business premises in:
    • the signatory state; or
    • the member state of a signatory organisation.

Agent and recipient of documents

National route
Foreign applicants should entrust a qualified Chinese agent to file a national trademark application and all official documents will be addressed to the Chinese agent.

International route
As regards Madrid applications, an applicant or its agent may file the application directly with the local IP office or the WIPO. The applicant may not designate a Chinese agent specifically for the application designating China. The WIPO will forward most official documents to the applicant or its local agent. The CNIPA will mail documents (eg, a notice of non-use cancellation or a notice of an invalidation action against the registration) directly to the applicant or the local agent filing the Madrid application. The applicant and its local agent should take note of the documents sent by the CNIPA and respond before the deadlines.

Date of application and registration

National route
For national applications, there will be an application date and, if approved, there will also be a publication period for opposition. If no opposition be raised or if the CNIPA dismisses any oppositions, there will be a further registration date.

International route
For Madrid applications, the application date is the registration date. The application will proceed to registration if it meets no refusal from the CNIPA and no opposition from third parties.

Goods and services

National route
In principle, the items of goods and services should be consistent with the Nice Classification in China. The examiner will exercise their discretion as to whether a non-standard item is acceptable. If the items are found to be non-standard or unacceptable, the CNIPA will issue a notice requesting the applicant to make amendments. If the applicant fails to respond before the deadline, or the amended item is still unacceptable, the whole application will be refused.

In the absence of a notice for amendment, the applicant, after filing a national application, may only delete some goods or services. It may not change or even limit the goods or services.

International route
Prior to examination, the CNIPA will translate the goods or services into Chinese. However, the scope of protection should be subject to the goods and services recorded with the WIPO.

The CNIPA is more likely to accept non-standard goods or services in Madrid applications. It rarely challenges the description of goods or services, unless they are categorically unacceptable in China – for example:

  • retail and wholesale services;
  • gambling services; or
  • virtual currency.

If the applicant is or will be offering goods or services that are not listed in the Nice Classification, it is recommended to file a Madrid application.

Moreover, applicants can limit or even rephrase the description of goods or services for Madrid applications, as long as the limit or rephrasing does not exceed the scope of the original goods or services. This is helpful when applicants are negotiating coexistence agreements or wish to avoid conflicts with prior trademarks.

In practice, some applicants hoping to broaden the protection scope of their trademarks resort to designating the goods using the headings of the Nice Classification, such as "apparel, footwear and hats" in class 25. Given that the CNIPA will relegate the goods into specific subclasses, applicants are advised to avoid using the headings of the classes as designated goods for the Madrid application.

If the goods or services are not acceptable in China, the CNIPA will issue a refusal notice and the applicant may file a review of the refusal with the CNIPA.

Examination period

The examination periods of the national and Madrid application are roughly the same. Under current practice, it takes about four months for the CNIPA to finish the formality and substantial examination of an application.

National route
A national application that passes the examination will be published for opposition for three months. If no oppositions are filed, it will proceed to registration. If the application process is smooth, the applicant can obtain a registration certificate within 12 months from filing.

International route
The applicant of a Madrid application may apply for the issuance of a registration certification upon the expiration of the refusal period. This period is 12 or 18 months from the date of notification by the International Bureau to the designated signatory parties.

Filing requirements for non-traditional trademarks

National route
Applicants filing for a national application should submit all the required documents together with the application form itself in the first filing.

International route
Applicants filing for a Madrid application of the following should submit the necessary documents to the CNIPA within three months after the filing date:

  • a three-dimensional trademark;
  • a colour combination trademark;
  • a sound trademark; or
  • a collective or certification trademark.

The necessary documents include:

  • a drawing or representation of the trademark; and
  • rules relating to the use and management of the trademark (for a collective or certification trademark).

Failure to submit the necessary documents within this period will result in the refusal of the application.

Possible actions in partial refusal

National route
The applicant of a national application must file a divisional application if it wants the approved goods to proceed to publication and registration while it files an appeal challenging a partial refusal decision.

International route
When a Madrid application encounters partial refusal, the approved goods or services will proceed to registration, regardless of whether the applicant files a review of the refusal.

Opposition procedure

National route
A national application that passes preliminary examination will be published. If no opposition is filed within three months from the date of publication, the application will proceed to registration.

International route
A Madrid application, prior to the substantive examination of the CNIPA, will go through a three-month opposition period. This period starts from the first day of the following month of the publication of the trademark in the international Trademark Gazette. If there is an opposition, the CNIPA will notify the applicant through the WIPO by issuing a provisional refusal notice. The applicant may respond to the CNIPA directly. As there is no separate publication for opposition in China's Trademark Gazette, some applicants opt to file a Madrid application to lower the risk of opposition.

Registration certificate

National route
The CNIPA will issue electronic registration certificates for national registrations.

International route
The international registration certificate for Madrid application is not legally binding in China. The applicant must file an application for a registration certification with the CNIPA upon the expiration of the refusal period. This period ends 12 or 18 months from the date of notification by the International Bureau to the designated signatory parties.

Post-registration procedures

National route
Applications for the following should be filed with the CNIPA directly:

  • renewal;
  • change of registrant address or name;
  • assignment;
  • deletion of goods; and
  • cancellation against a national registration.

Applications to renew a national registration may be filed within one year prior to the expiry of the registration period.

International route
Applications for the following should be filed with the WIPO:

  • renewal;
  • change of registrant address or name;
  • assignment; and
  • limitation of goods.

However, the CNIPA will conduct the examination.

The WIPO usually notifies the CNIPA of any renewal applications towards the expiration of the registration period. The registrant is unable to get a renewal certificate prior to the expiration of the registration. This time gap may complicate the registrant's enforcement actions in China.

Information accessibility

National route
The applicant may access the CNIPA's online database to keep up to date of the status of a national application.

International route
For Madrid applications, the information available on the CNIPA's online database is far less complete and accurate. The WIPO's online database does not have all the information for the trademark in China.

Stability of registration

If the basic mark based on which a Madrid application was filed is cancelled or invalidated within five years from the application date, it will affect the stability of the registration in the designated countries. The applicant may apply to transform the Madrid registration to a national application within three months of the cancellation of the Madrid registration.

For further information on this topic please contact Yunquan Li, Yuanyuan Song or Junyi He at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected], [email protected] or [email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.

An earlier version of this article was first published by IAM.