Introduction to Application for Trademark Registration in China

Applications for trademark registration will be processed pursuant to China’s Trademark Law and the Implementing Regulations of the Trademark Law.The Trademark Office under the State Administration for Industry andCommerce (SAIC) is the government authority for registration oftrademarks in China. The Trademark Management Office under SAIC is the administrative arm responsible for managing all trademark-related matters.

Anyforeigner or foreign enterprise intending to apply for trademarkregistration in China should file an application in accordance withrelevant agreements concluded between the country to which the applicantbelongs and China, or according to relevant international treaties towhich both countries are parties, or on the basis of the principle ofreciprocity. 

Foreign-invested enterprises (FIEs) may apply for trademark registration in Chinaeither directly or through trademark agents. Foreign enterpriseswishing to do the same should appoint agents designated by the state tohandle trademark registration for foreign parties.

1. Points to Note in Application for Trademark Registration

avisual sign ,such as word, design, letters of an alphabet, numerals,three-dimensional symbol, combinations of colors, and their combination,can be used to distinguish its goods or service from that of theothers’, may be filed for registration. But some special words orsymbols, like countries’ names, international organizations’ names andsymbols, such as the Red Cross, may not be registered as trademarks.

Asto the marks, EHEXX and EHEXXINSURANCE (both in English and Chinesecharacters) obviously are not under the prohibition list of thetrademark law. Yet, without a comprehensive research, I am not surewhether they are available or not. BLUE CROSS, BLUE SHIELD and thecombination of BLUE CROSS AND BLUE SHIELD and AETNA may also beregistered as commercial marks provided that they are not fallen underthe text of Article ten of trademark law. 

Inapplying for trademark registration, the class and description of thegoods should be put in the application form according to the prescribedclassification system. Currently, Chinaadopts the International Classification System, which classifies goodsand services into 34 categories and 8 categories respectively.

Wherean applicant intends to register the same trademark for goods indifferent classes, a separate application for registration should befiled in respect of each class of the prescribed classification ofgoods. 

Wherea registered trademark is to be used in respect of other goods of thesame class, a new application for registration should be filed.

Where any design of a registered trademark is to be altered, a new registration should be applied for.

Where,after the registration of a trademark, the name, address or othermatters concerning the registrant change, an application regarding thechange should be filed.

A geographical indication may be the subject of an application for registration as a certification mark and a collective mark.

2. Procedures for Trademark Registration and Documents Required

In applying for trademark registration, the following documents should be submitted to the relevant authorities: Application for Trademark Registration,power of attorney, five copies of the reproductions of the trademark(if colour is claimed, five copies of the colour reproductions of thetrademark), and one copy of the black and white design thereof. Thereproductions of the trademark must be clear and easy to be pasted upand should be printed on smooth and clear durable paper or substitutedby photographs, the length and width of which should be less than 10 cmbut more than 5 cm each. 

Whena foreigner or foreign enterprise applies for trademark registration,the Chinese language should be used (any document in a foreign languageshould be accompanied by a Chinese translation).

Wheretrademark registration is applied for a three-dimensional mark, theapplicant should state the same in the application and submitreproductions enabling determination of the three-dimensional shape.

Wheretrademark registration is applied for a colour combination, theapplicant should state the same in the application and submit a textdescription.

Whenapplying for registration of a collective mark or certification mark,the applicant should state the same in the application and submit acertificate of qualification as subject and the rules for administrationof the use of the mark. 

Applicationsfor trademark registration will undergo examination as to form andexamination as to substance by the Trademark Office in accordance withthe Trademark Law. Where an application has passed theexamination both in form and in substance, preliminary approval will begranted and the trademark will be published. 

Anyperson may, within three months from the date of publication of thetrademark, file an opposition against the trademark that has beengranted preliminary approval. The Trademark Office will send the Application for Trademark Oppositionto the opposed party for a response to be made within 30 days as fromthe receipt of notification. The Trademark Office will then make anadjudication based on the facts and grounds presented by both parties.

Whereno opposition has been filed against a trademark or the opposition isnot justified, approval will be granted for the trademark to beregistered. A certificate of registration will be issued and thetrademark will be published. Where the opposition is justified,registration will be refused.

Ifthe registration of an opposed trademark has been published before theruling on the opposition becomes effective, the original publicationwill be revoked and the trademark whose registration is approved in theadjudication on the opposition will be published anew.

3. Right of Priority in Trademark Registration Application

Wherean applicant, within six months from the date of his first-timeapplication for registration of a trademark in a foreign country,applies for registration of the same trademark for goods in the sameclass in China, he may enjoy the right of priority in accordance withany relevant agreement entered into between that country and China orany relevant international treaties to which both countries are parties,or on the basis of the principle of reciprocity.

Wherea trademark is used for the first time in respect of a commoditydisplayed in an international exhibition organized or recognized by China,the applicant of the trademark is entitled to the right of priority fora period of six months from the date of the display of the commodity. 

4. Application for Change of Details of Registered Trademark

Tochange the name, address or other registered particulars of a trademarkregistrant, an application for change should be filed with theTrademark Office. Upon granting approval, the Trademark Office willissue a certificate to the registrant and announce the change; forrejected cases, the Trademark Office will notify the applicant inwriting, stating the grounds for rejection. 

Tochange the name of a trademark registrant, a document in support of thechange issued by the registration organization should be submitted.Where the name or address of a trademark registrant is to be changed,the trademark registrant should make the same modification in respect ofall his registered trademarks.

5. Application for Assignment of Registered Trademark and Transfer of Exclusive Right to Use a Trademark

Wherea registered trademark is to be assigned, both the assignor andassignee should submit an Application for Assignment of RegisteredTrademark to the Trademark Office, while the application procedures areto be completed by the assignee. Upon approval granted by the TrademarkOffice, a certificate to that effect will be issued to the assignee andthe assignment will be announced.

Whenassigning a registered trademark, the trademark registrant shouldassign simultaneously the same or similar trademarks registered by himfor the same or similar goods.

Ifthe exclusive right to use a registered trademark is to be transferredfor reasons other than assignment, the transferee should complete theprocedures for the transfer of such right with the Trademark Office bypresenting the relevant supporting documents or legal documentation.When transferring the exclusive right to use a registered trademark, thetransferor should transfer simultaneously the same or similartrademarks registered by him for the same or similar goods.

6. Validity Period and Renewal of Registered Trademark

Theperiod of validity of a registered trademark is 10 years, counted fromthe date of approval of the registration. For renewal, the period ofvalidity of each renewal is 10 years, counted from the day immediatelyfollowing the expiration of the preceding validity period. 

Wherethe registrant intends to continue to use the registered trademarkbeyond the expiration of the validity period, an application for renewalshould be made within six months before the said expiration. If noapplication is filed within this period, a grace period of six monthsmay be granted. If no application is filed at the expiration of thegrace period, the registered trademark will be cancelled.

Toapply for renewal of a trademark registration, an application forrenewal of trademark registration should be filed with the TrademarkOffice. Upon approval granted by the Trademark Office, a certificate tothat effect will be issued to the registrant and the renewal will beannounced.

7. Authorized Use of Registered Trademark

Atrademark registrant may, by signing a trademark licensing contract,authorize other persons to use his registered trademark. The licensorshould file a copy of the trademark licensing contract with theTrademark Office for the record within three months from the signing ofthe contract. Parties authorized to use the registered trademark ofothers must show the name of the licensee and the place of production ofthe goods on the goods using the licensed trademark.

8. Re-issuance of Certificate of Trademark Registration

Where a Certificate of Trademark Registration is lost or damaged, it is necessary to apply for re-issuance of the certificate and the registrant should submit an Application for Re-issuance of Certificate of Trademark Registration and five copies of the reproductions of the registered trademark to the Trademark Office. Where the Certificate of Trademark Registrationis lost, a declaration should be published in the Trademark Gazette.Where the certificate is damaged, it should be returned to the TrademarkOffice.

9. Protection of Well-known Trademark

The Trademark Office under SAIC is responsible for endorsing and managing well-known trademarks.

Atrademark registrant seeking protection for his well-known trademarkshould file an application with the Trademark Office. Upon endorsement,the Trademark Office will notify the applicant and publish the relevantinformation. For trademarks endorsed by the Trademark Office aswell-known, no application for renewal of endorsement is necessarywithin three years after endorsement. 

Ifany person uses a trademark that is identical with or similar to thewell-known trademark of another person on goods of a different class,insinuating that the goods are in some way associated with theregistrant of the well-known trademark thereby causing possible damageto the registrant, the registrant of the well-known trademark may make arequest, within two years from the date on which he obtains or shouldhave obtained knowledge of such acts, to SAIC to stop such acts.

Oncea well-known trademark has been endorsed,SAIC will not approve the useof any word or device that is identical with or similar to the saidwell-known trademark by any person as part of the name of an enterprisewhich may mislead the public. For well-known trademarks that have beenregistered, the registrant may, within two years from the date on whichhe obtains or should have obtained knowledge of such acts, request SAICto cancel it(Simon-2004-01).