Brief Introduction of Chinese Trademark System

2016-09-20
Katherine HE
Borsam IP  ————————————————


As one of the most important market in the world, the trademark applications in China are increased year by year, according to the data published by CTMO, in 2015, there are approximately 2.8 millions of trademark applications in China.

The principle adopted by China is “first to file”, which means that the legal protection only applies to the one recorded before CTMO. Therefore, it is advisable to file a trademark application as early as possible when you are starting your business. Meanwhile, the filing strategy of a trademark is also very important. For example, if your trademark consists of figures, Chinese words and/or English words, people may take it for granted in filing them as a whole in an application.
 
Although this may actually enhance the possibility of refusal by CTMO because this actually examines those elements separately. Hence, once one part of them is refused, the whole application is then not to a satisfactory level. Even if it ends up being approved, it is necessary to use the trademark as what is filed before CTMO to meet the use requirement after grant. Therefore, we normally suggest filing additional trademark applications for the elements separately to enable you to use the trademark freely.
 
Meanwhile, the most important thing for starting the trademark application is search. Before you begin filing your application, the search can help you to determine if your trademark is capable of being registered or if it carries a risk to be refused due it bearing a similarly to other trademarks. As a result, we strongly advise employing a trademark attorney to analyze the similarity of the search result.
 
How to conduct a search for a trademark?
 
CTMO provides a free search database for the public to find identical or similar trademark applications/registrations but this is only in Chinese, so this is a big problem for those not familiar with the language.
 
We hereby provide simple guidance (
http://borsamip.com/Guidance/Trademark/_130.html ) about how to use the search database in CTMO and how to find similar trademarks if your trademark is non-Chinese or a figure trademark.
 
How do you file trademark applications in China?
 
There are two ways of filing trademark applications in China, i.e. online filing and post filing. The online filing system is only suitable for the new trademark application with standard goods/service items. The other procedures and new trademark application with non-standard goods/service items can only be filed through post filing.
 
To file the trademark application, the applicant shall at least have the following information first.
 
1)      Trademark name and sample;
2)      Applicant’s name and address;
3)      Identification documents, for example, passport, ID card, business certificate etc.
4)      Class and classification;
 
What is a non-standard goods/services item?
 
CTMO adopts their own classification table which is re-edited from the Nice Classification Table by adding some goods items and organizes them into a group under each class. The goods/services items in this book are called “standard goods/service items”. This is also one of the similarity judgment standards in the trademark examination.
 
For example, the trademark “Borsam” is registered on the items of intellectual property consultation while another trademark “Borsan” applies on the items of writing letter for others. They may seem different, but those two trademarks are similar because the items “intellectual property consultation” and “writing letter for others” belong to the same group.
 
The trademark examination in China is quite strict, especially in the preliminary examination stage, and CTMO doesn’t allow the applicant to amend the application or supplement any documents, so it’s common to receive a non-acceptable notification. Meanwhile, any deadline in trademark procedures is non-extendable and non-restorable, once it is missed, the only choice for the applicant is to file a new application.
 
How long is the trademark valid?
 
From 2014, the examination period was shortened to 9 months due to the amendment of Trademark Law, this means that if no opposition is filed, the applicant can get a certificate in around one year from the filing date.
 
The validity period for a Chinese trademark is ten years from the registration date, and can be renewed every ten years.
 
For more information about the Chinese trademark procedures, please refer to our column services for trademarks, click here.