It’s a necessary step before filing a trademark application. The CNIPA database enables to find the identical or similar trademark application/registrations by your own, but the similarity judgment requires rich experience which shall be provided by a trademark attorney. The search can help you save money and time to wait for the conclusion issued by CNIPA.
There are two ways to file trademark applications in China, i.e. by online filing system and by post. The trademark office is strict on the formalities check, any defects may result the application be sent back. Meanwhile, according to the Chinese trademark law, a foreign applicant shall entrust a Chinese attorney to file the applications. Normally, it will take about one year to receive the decision of given or not.
Respond to rectification notification
The office action is issued during the preliminary examination stage mainly concerning the non-standard goods items. In China, CNIPA adopts its own classification table which is reedited from Nice classification Table but with some new items. Although the non-standard goods/services items for an application can also be registered in China, it has a high risk to receive a rectification notification.
Request to change of name/address
This request is used to change the name and address information of current applicant/holder and the trademark is still owned to the same person/entity after change.
Request to change of agency
This request is used to change the agency recorded in CNIPA, after filing said request, all the notifications for this case will be send to the new agency until the trademark approved or another change rose.
Request to record a license
This request applies to record a trademark license before CNIPA. According to the Trademark Law, the licensor shall file a request to record the trademark license agreement within 3 months from the signing date.
Filing request of opposition for a Chinese national trademark application
This request applies to oppose the national trademark application which is published and enters into the three-month opposition period. Any interested party can file a basic request within this period and supplement the evidences within three-month after filing said basic request. The three-month deadline is calculated from the publication date of the application.
Filing request of opposition for an international trademark application with designating China
This request applies to oppose the Madrid international application with designating China, after the publication of The WIPO Gazette of International Marks, any interested party can fill an opposition against the international trademark application before CNIPA within 3 months. The three-month deadline calculated from the first day of following month after the publication. For example, if the publication date is June 22, 2016 that the deadline for opposition would be October 1, 2016.
Request to withdraw kinds of application
Once the request made, the procedure will not stop until the final decision made. Hence, if the applicant found the situation is changed and he would never need to go on the foresaid application that he may file a new request to withdraw it. But the fees and document submitted to CNIPA cannot be return.
Request to cancel a trademark registration
If a trademark is already not in use, the applicant can request to cancel the trademark registration by filing a simple request before CNIPA.
Request to issue a certified copy of an international trademark application
The Chinese trademark office doesn’t issue a trademark certificate for an international trademark application with designating China, so it’s inconvenient to prove when enforcing parts of the trademark rights. The trademark holder can request for a certified copy from CNIPA to use as a trademark certificate in practice.
Filing appeal for trademark review of refusal for international trademark application designating China
As the designated office, after making the refusal decision, CNIPA forwards it to WIPO to inform the applicant of the international trademark application. CNIPA accepts the deadline for filing such appeal is 30 days from the issue date of WIPO which is looser than a national trademark application. However, it’s also impossible to extend or restore if you missed the prescribed deadline.
Filing appeal for trademark review of refusal for national trademark application
A refusal decision may come after the substantive examination of a trademark indicating the reason why the trademark cannot be registered in China. The most common reason is the existed same/similar trademarks. The applicant is allowed to file an appeal within 15 days of the receipt date of the notification before CNIPA by submitting his statement and/or evidences of use to prove the difference between the citation and present trademark application, or prove the present trademark has obtained certain reputation. The deadline for filing the appeal cannot be extended and is non-restorable.
Request to reduce the goods/services items for a trademark application
Although the Chinese trademark office doesn’t request to submit use evidence after grant, but the risk to be challenged is still existed due to the revocation and invalidation procedure. Hence, the applicant may choose to file such request to delete the goods/services items they are actually not in use.
Request to reissue a trademark certificate
The trademark holder can request to reissue a new trademark certificate once it lost which cost about 6 months to get the new one.
Filing request for trademark invalidation
Its only applies to the registered trademark with a period of five years after grant. The trademark reexamination board will make a decision within 12 months after receiving said request.
Filing an appeal for trademark review
This procedure applies to the appeal after receiving the decision for an opposition, revocation and invalidation. The deadline for filing an appeal is also 15 days of the receipt date of the decision which is non-extendable and restorable.
Filing request of revoking continuously three years non-use trademark registration
According to Chinese trademark Law Article 49, the registered trademark has not been used for a period greater than three years without any justifiable reasons, any organization or individual may request that the Trademark Office make a decision to cancel such registered trademark.