Filing And Prosecution: China

Question 1

Why is China an important market?

Answer 1

One of the biggest economies in the world
One of the most populous countries in the world
Known as the ‘worlds factory’
Important market for British business - both manufacturing and sales
TM Registration is important - China is a First-to-file country

Question 2

How does TM Registration work in relation with China, Hong Kong and Taiwan?

Answer 2

Taiwan (republic of China) is a SEPARATE country with its own trademark register ( relationship with PRC is complex)

Hong Kong (since 1997) is part of the PRC but has its own trademark laws and register

Macau is part of PRC but also has its own trademark laws and register

Question 3

Who may apply for a TM in China?

Answer 3

No nationality restrictions on who may apply

Applicants should have legal standing to own property

Foreign (non-Chinese) applicants must be represented by a state approved trademark agency (will need a POA)

Applicants name will be entered in Chinese on application

Application filed in Chinese

Question 4

What types of marks can you file in China?

Answer 4

1. Standard marks (word, logo, sound device)
2. Collective marks
3. Certification marks

Question 5

How does classification work for Chinese TM’s?

Answer 5

China uses the NICE Classification but also applies its own sub-class system beneath this

This sub-class system is essentially a tick box system of existing terms

China is a multi-class country but often advisable to file single-class applications so problems with one class do not hold up entire application

Prudent to discuss wording of a specification with a Chinese attorney before you file in China (and even before first filing in UK -as if you are claiming priority, the goods/services have to be identical) want to ensure spec is broad and covers widest range of subclasses OR may be aware of prior rights and therefore may omit those classes to avoid being cited

Question 6

What class does China not have?

Answer 6

Retail services

But can file in Class 35 as a work around

Question 7

Can you claim priority on a Chinese TM?

Answer 7

Yes - 6 month window from date of first filing

A priority document (certified copy) must be filed to support the priority claim, needs to be filed within 3 months of application being filed

Wording of the Chinese filing has to match the priority claim (may have to transform it into locally recognized terms)

Question 8

What are the forms and fees required for filing a TM in China?

Answer 8

Chinese attorneys will normally prepare any application forms for filing

They will require a simply signed POA from applicant

TM applications are very cheap in China (basic fee for 1 class covers 10 items), however particularly long specifications can attract higher fees

Professional fees for local attorney

Question 9

How is examination conducted on a Chinese TM?

Answer 9

1. Classification examination conducted first - you have a short deadline for compliance or deletion of objected term(s). Only ONE chance to file acceptable response (if response does not overcome objections then examiner can refuse your application)
2. Second stage examination - absolute and relative grounds - short deadlines to respond. Due to significant size of Chinese register, high chance you will receive citations.

Question 10

How can you deal with a citation?

Answer 10

1. Argue against citation (i.e that your mark is not similar)
2. Try to buy a citation from its owner
3. Narrow your specification to escape citation
4. Apply to invalidate earlier mark or revoke for non use

Question 11

What happens once a mark has passed examination?

Answer 11

Application will be accepted and then published in the Trademark Gazette

Opposition term is 3 months (non-extendable)

Question 12

How long is the registration period for a Chinese TM?

Answer 12

Registration is for a 10 year period with renewal calculated from the registration date

Renewal term is effectively 10 years minus 1 day (if registration date is 21st November 2023, will have to pay renewal fee on or before 20th November 2033)

Question 13

What are the use requirements for a Chinese TM?

Answer 13

Chinese TM is vulnerable to cancellation on grounds of non use if not used for a continuous period of 3 years

Question 14

What are the advantages/disadvantages of using International system designating China as opposed to national TM?

Answer 14

1. Makes administering of a TM portfolio easier and more cost effective to manage
2. Specification objections less common when filing with Madrid Protocol (as specification examination conducted by WIPO)
3. Does not require a Chinese TM agent (save on attorney fees) unless there is a refusal, which are common

However

1. Your international specification will be allocated Chinese subclasses as the examiners discretion which means - specification may not be broad enough, or examiners may classify into subclass you are not interested in which could result in a citation
2. National applications tend to be quicker
3. Need to obtain a Chinese language document to enforce mark, register in with customs
4. Also necessary to obtain a certified copy of a Chinese designation (fees to do this)
5. Marks in Chinese characters less suited to Madrid filings as need to have a mark in your home country