The following articles shall comprehensively guide to register trademark in China which the trademark applicant should note prior to officially filing China trademark.
| QUESTIONS | ANSWERS |
| What is trademark rights in CHINA: first to file or first to use? | In China the rule “first to file” is applied, meaning that no matter the trademark is used in China, the person, who files a trademark registration application the first, shall have prior rights with that trademark. |
| What is advantage of trademark registration in CHINA? | The trademark registration is not compulsory in China; however, registering trademark shall bring many advantages to the holder. Through the registration, individuals and organizations can prove easily that they are the owner of their trademark, which normally is difficult to collect evidences.
Moreover, thanks this evidence, the holder can avoid infringement and use it to deter others from unlawfully using the trademark. Even in case of that they do not carry out their trademark registration, in practice, they are able to lose rights for their trademark if another trademark, which is registered prior to their trademark, is the same with the trademark. |
| Definition of trademark in CHINA (i.e. What can be a trademark in CHINA)? | In China, the definition of a trademark is any signs to distinguish the goods or services of other individuals and organizations and such sign may be words; names; devices; certain three dimensional shapes; colors; slogans; trade dress/getup (only trade dress/getup with distinctive elements); combinations of the above elements.
From that, a trademark wants to be capable to be registered in China, it needs satisfy the following conditions: “It is a visible sign; It is capable of distinguishing the goods or services of one person or entity from another”. Hence, when the owner wants their trademark registered and protected in China, their trademark needs meet such conditions. |
| Do we need to conduct trademark search in CHINA before officially filing trademark in CHINA? and Why? | It is not mandatory. However, it is very useful for applicant to determine the chance of success when filing a trademark application in China. |
| What international treaties CHINA is a member? | China have taken part in many international treaties Paris Convention; Singapore Treaty; Madrid Agreement; Madrid Protocol; Nice Agreement.etc |
| When is opposition to trademark application in CHINA? | Any parties have the right to file the opposition against an applied trademark before it has been granted the protection. |
| Do we need Proof of use for trademark in CHINA? | Proof of use is not required for obtaining the protection of trademark in China. However, it is required to have the proof of use for defending the trademark against the non-use claim.
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| What rights do owners of trademark have after getting trademark registration in CHINA? | After the certificate is granted, the holder has rights to use their trademark, oppose the subsequent conflicting application, bring a cancellation action against a subsequent conflicting registration, sue for infringement against confusingly similar third party trademark use, license other third parties to use the trademark, apply for seizure by customs authorities for importation of counterfeit goods and obtain damages for infringement.
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| What is term of trademark in CHINA? | After the certificate is granted, the holder has rights to use their trademark, oppose the subsequent conflicting application, bring a cancellation action against a subsequent conflicting registration, sue for infringement against confusingly similar third-party trademark use, license other third parties to use the trademark, apply for seizure by customs authorities for importation of counterfeit goods and obtain damages for infringement.
Moreover, 6 months before the certificate is expired, the holder need to renew their trademark protection certificate and they can renew 2 times with 10 years per time. In case of that the holder file renewable dossiers after the expired date, 6 months is a grace period for registration renewal, but they must endure a fine for the late time. |
| What is use requirement after trademark registration in CHINA?
What actions could be considered as use of trademark in CHINA?
Could we stop validity of trademark registration certificate based on non-use for a period of time?
How many years of non-use? |
In China, the owner does not need to prove the use of their trademark, but the trademark must be used in practice. Others can request the owner to prove their use by giving evidences that the holder have done trading actions with their trademark such as advertising, establishing business locations and especially providing customers with their items/services. In case of that the trademark has not been used by its owner or the licensee of the owner without justifiable reason for three years, which is calculated by dating back three years from the date of receipt of “Application for Cancellation of Registered Trademark Not Having Been Used for Three Consecutive Years” by the Chinese Trademark Office, the effectiveness of the trademark shall be terminated. |
| Is cancellation of trademark registration in CHINA available?
What is the foundations for such cancellation? |
The cancellation of trademark registration in China is available. A trademark may be cancelled where: – The registered trademark conflict with the earlier trademark; – The trademark consists the signs are indistinguible such as the sign indicates the kind, quality, quantity, intended purpose or value of goods/services or other characteristics of goods or services. – The mark that are similar or identical with the well-known trademark. – The mark that are similar or identical with the armorial bearings, flags and other state emblems. – The mark is generic. |
| What is required documents for renewal trademark in CHINA?
Is grace period after renewal date allowed? |
6 months before the certificate is expired, the holder need to renew their trademark protection certificate and they can renew 10 years per time. In case of that the holder file renewable dossiers after the expired date, 6 months is a grace period for registration renewal, but they must endure a fine for the late time. |