Law firms are entitled to handle trademark issues governed by CTO and TRAB in accordance with “Measures for the Administration of the Engagement in Trademark Agency Business by Law Firms” which entered into force on January 1, 2013.
On November 6, 2012, the State Administration for Industry & Commerce (SAIC) and the Ministry of Justice (MOJ), jointly released the “Measures for the Administration of the Engagement in Trademark Agency Business by Law Firms” (the Measures). These 25-article Measures, which entered into force on January 1, 2013, allow the law firms, upon authorization of the clients to handle trademark matters governed by CTO and TRAB, such as
- Application for trademark registration, modification of trademark application/registration, renewal of trademark registration, application for assignment of trademark application/registration, amendment of trademark application/registration as per CTO’s request, filing pledge registration of registered trademark, recordal of trademark license contract, trademark opposition, trademark annulment, trademark revocation, application for trademark Madrid international registration, as well as other trademark-related matters governed by the China Trademark Office (CTO) under the State Administration for Industry & Commerce (SAIC);
- Filing review of refusal and review of opposition against the trademark application, filing review of revocation and dispute against the registered trademark, as well as other trademark-related matters governed by the Trademark Review and Adjudication Board (TRAB);
- Other matters pertaining to trademark international registration.
On March 28, 2013, the China Trademark Office (CTO) accepted the first trademark opposition application filed by a local law firm.
Law firms, which intend to engage in the practice of trademark agents, shall file application for recordal with the CTO and deposit an advance payment of official fees to the CTO’s designated account. Where the law firm’s advance payment is insufficient to cover the official fees, the CTO and TRAB are entitled to reject such law firm’s trademark application.
A total of 7,846 firms including WAN HUI DA Law Firm and its Guangzhou office are recorded with the CTO since the Measures came into effect.
The Measures are definitely applauded by the law firms in China for being allowed to engage in full trademark agency service. Nevertheless, opportunity comes along with challenges, and the access of law firm in the trademark agency business will intensify the competition among the players in the industry.