1. Types of Trade Marks & Registration
1.1 Types of Trade Marks
In China's legal system, there are different types of trade marks/ service marks, for example, unregistered marks, registered marks, certification marks and collective marks.
According to Article 8 of the China Trademark Law, any sign capable of distinguishing the goods or services of a natural person, legal person or any other organisation from those of other persons – including words, devices, letters, numerals, three-dimensional signs, combination of colours, sounds, etc, as well as the combination of such signs – shall be eligible for application for registration as a trade mark.
Trade dress, company names and trade names are not stipulated types of trade marks in accordance with the China Trademark Law, but they can also be protected under certain circumstances; they are mainly protected by the Anti-unfair Competition Law.
All rights to such trade marks are based on statutory law, rather than case law.
1.2 Trade Mark Registration
By registering the trade mark with the China National Intellectual Property Administration (CNIPA), the trade mark-owner can enjoy exclusive trade-mark rights over the mark.
Besides registration, the prior use of a trade mark can also be protected in China. For example, a bona fide prior use of an unregistered mark can defend against the tort claim of infringement. An unregistered well-known trade mark can be protected against copy or imitation by a third party on similar goods/services, through oppositions or invalidations, as stipulated by the China Trademark Law. Furthermore, if a mark has prior use and has gained a certain reputation, then a rush-registration of the mark on similar goods/services by a third party is not allowed, in accordance with Article 32 of the China Trademark Law.
Trade dress is not a stipulated type of trade mark in China. If a trade mark is considered as lacking distinctiveness, by proving that the mark has acquired secondary meaning the mark can still be approved for registration.
1.3 Trade Mark Register
Trade-mark applications shall be filed with the China National Intellectual Property Administration (CNIPA), the only trade mark register in China. The CNIPA has an online database which is available to the public.
It is normal and necessary to conduct a search for prior filed or registered trade marks, so that the applicant may take action against possible obstacles in advance of filing. The examination period is very short, and is decreasing, so it may be too late to take actions after the application is rejected by the CNIPA. Marks that are already in use but not yet filed with the CNIPA cannot be located through a trade mark search. The CNIPA can do a trade mark search for either word mark or device mark. The required information includes trade mark, class and goods/ services description to be covered.
1.4 Registration Requirements
The formal requirements to register a trade mark include the following aspects:
- name and address of the applicant;
- clear trade mark sample in electronic form with high resolution;
- class and goods/services items covered – the applicant should use the standard descriptions to avoid an official action;
- power of attorney signed by the applicant, if the application is to be filed through a trade mark agent – according to the Chinese Trademark Law, a foreign applicant must entrust a legally established trade mark agency to file trade mark applications; and
- a copy of the commercial registry (certificate of good standing) for a company applicant, or a copy of passport or ID card for an individual applicant.
Any natural person, legal person or other organisation can apply for trade mark registration with the CNIPA.
Any sign capable of distinguishing the goods or services of one natural person, legal person or any other organisation from those of other persons – including words, devices, letters, numerals, three-dimensional signs, combination of colours, sounds, etc, as well as the combination of such signs – shall be eligible for application for registration as a trade mark. At present, scent cannot be registered as a trade mark in China.
Apart from trade marks, company names, trade names and a well-known commodity's specific name, packaging and decorating can also be protected, which is mainly stipulated by the Anti-unfair Competition Law.
The above-mentioned rights mainly arose from extensive and long-time use and promotion in China.
1.5 Registration Procedure
After an application for the registration of a trade mark is filed with the CNIPA, they conduct formal examination, especially with respect to the goods/services items. If the goods/services items do not meet standards, the CNIPA will issue notification of amendment and request the applicant to make a response within 30 days since receipt of the notification. If the application does meet the formal requirement, the CNIPA usually issue a filing receipt in approximately one month. However, if there is a notification of amendment, the CNIPA will only issue an official filing receipt after the amended goods/services can be accepted. Per current practice, there's only one chance to amend the goods/services. If the goods/services after amendment are still unacceptable, the CNIPA may issue a non-acceptance notice to the application, without issuing another notification of amendment.
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Originally published by Chambers Global Practice Guide