China trademark application procedures explained in full
Feb. 16 – The on-going Proview-Apple trademark case over the rights to the iPad name continues to rumble on in China, provoking much commentary about the security of trademark registrations in the country. The Proview case aside, which is likely to be something of a one-off, the registration of trademarks in China is actually quite a simple and inexpensive procedure. Of course it makes sense to register marks in China – as Apple have found to their cost – and trademark registration should be part of any start-up kit for a foreign business entering the China market.
A trademark is any word, phrase, symbol, design, combination of colors, product configuration, group of letters or numbers, or combination of these, used by a company to identify its products or services and distinguish them from the products and services of others. The primary purpose of trademarks is to prevent consumers from becoming confused about the source or origin of a product or service.
In practice, fours kinds of trademarks are recognized by the Trademark Law in China:
- General trademarks: In which “trademarks for goods” and “trademarks for services” are included.
- Collective marks: Signs which are registered in the name of bodies, associations or other organizations to be used by the members thereof in their commercial activities to indicate their membership of the organizations.
- Certification marks: Signs which are controlled by organizations capable of supervising some goods or services and used by entities or individual persons outside the organization for their goods or services to certify the origin, material, mode of manufacture quality or other characteristics of the goods or services .
- Well-known trademarks: Marks which have a strong reputation among the relevant public in China—where a dispute arises in the procedures of trademark registration and the party concerned believes that its trademark constitutes a well-known trademark, it may request the Trademark Office or the Trademark Review and Adjudication Board to determine whether its trademark fulfills the criteria for a well-known trademark.
Three-dimensional trademarks were newly added to Trademark Law in 2001 and reflected in Article 8 of the law. In 2009, this Article has been proposed to be changed to the following:
“Any visual sign capable of distinguishing the goods and service… including words, devices, letters, numerals, three-dimensional symbols, colors, or any combination of the above elements may be applied for registration of a trademark. Where appropriate, an application for registration of a trademark of sound, smell or motion may be accepted by the TMO. The concrete regulations for registration of such marks shall be released separately…”
Advertising slogans can be registered as trademarks if they possess exceptional originality and distinctiveness.
The general principle governing trademark applications is that of “first to apply, first to be served.” The valid period of registration is 10 years from the day of approval and registration can be renewed for an unlimited number of times. Each renewal prolongs the trademark validity of another 10 years from the date of expiration of the previous period of validity.
It is highly recommended when registering a trademark in China to also register it in Chinese characters. Not only do Chinese customers recognize a trademark more easily in their own language, but a trademark owner also protects the Chinese character trademark from being used by competitors.
One should be aware that unlike in many other countries the trademark legislation does not include any regulation about “company names.” In addition, the administration responsible for registration of company names is different from the trademark authorities. This has led to registration by competitors of company names containing other entities’ trademarks and vice versa.
With the rapid expansion of the Internet, more and more people have realized the importance of domain names. Usually, a company will register their trademark or their enterprise name as their domain name—an additional domain name ending “.cn” is often useful for marketing purposes in China. Domain name registration follows the principle of “first come, first served.” It is very important to register the trademark or enterprise name before it is hijacked by others. A simple research of your company name or trademark on the Internet will show the importance of a domain name. The annual fees for registering such a domain name are very low.
Finally, back to the Proview-Apple legal saga, a detailed (and entertaining) account of the issues between Apple and Proview can be found by reading Beijing-based IP lawyer Stan Abrams’ comments on his China Hearsay blog.
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