Trademark Registration by a Foreigner or Foreign Enterprise
Article 10 of the Trademark Law of the People's Republic of China : Any foreigner or foreign enterprise intending to apply for the registration of a trademark or for any other matters concerning a trademark in China shall entrust any of such organizations as designated by the State to act as his or its agent.
According to this law, foreigner or foreign enterprises may apply for the registration of a trademark or for other matters relating to trademarks, including the opposition towards a trademark applying for registration, responses to arguments over trademark registration; the approval of well-known trademark registration; the modification, assignment, renewal, and adjudication-on-dispute concerning a registered trademark; the record-keeping of registered trademarks; the research into records of registered trademarks; the re-issuing of lost or stolen certification documents concerning registered trademarks; the cancellation of registered trademarks; the automatic cancellation of registered trademarks that have been out of use for a period of at least three years; the adjudication of disputes over trademark registration; and the filing of a protest over a trademark deemed offensive, subject to the cancellation of the offensive trademark; the adjudication of disputes over trademark registration; the cancellation of registered trademarks; various applications relating to blocking a trademark from being registered; bringing to court cases of infringement of one's protected rights regarding registered trademarks; research into previously granted trademarks; consultation concerning trademarks; and permitting an associated person or company to advertise for the trademark owner by employing the trademark in the said advertisement. Foreigners or foreign enterprises shall entrust organizations recognized as qualified by the Trademark Office of the State Administration for Industry and Commerce to act as his or its agent in performing the actions described above.
Our law office has many years of broad experience in applying for trademark registration and for other matters concerning trademarks on behalf of foreigners and foreign enterprises. We welcome the opportunity to work on your behalf.
Trademark Research
Prior to applying to register a trademark, one may first do some research into pre-existing trademarks, but this kind of research is not absolutely necessary. The trademark office will usually reply with the results of the research within one or two days.
The parameters of the research include all previously registered trademarks dating back from the date of the request for research. The results of the research are not guaranteed by law, but are for informational purposes only. Neither do the research results constitute an approval or disapproval of one's trademark registration in and of themselves. Please note the following conditions:
• If the research uncovers a similar trademark that is either already registered or is in the process of being registered, the trademark with the earlier application date has precedence. However, if two similar trademarks, which were recently applied for registration, were submitted within too close a timeframe to each other, the research may not be able to reveal their similarity.
• If the words employed in the trademark being researched are too generic (without distinctive characteristics or uniqueness), or if they are among words forbidden from use in trademarks by trademark law, the research results may not be able to reveal whether or not the said trademark is subject to approval.
• If the research reveals a few previously registered trademarks with potentially similar appearances, our legal agents will make a recommendation based on experience and the general standards for registration about whether or not the trademark being researched has a chance for approval; however, this is merely a recommendation and does not represent the policy of the trademark office.
• If the research only addresses one part of the trademark being registered (for example, the English name, the Chinese name) and the remaining part (for example, the symbol or picture) is similar to or the same as a previously registered trademark, the trademark being registered will not be approved.
• If the research only addresses the name employed in the trademark and the trademark actually applied for registration is different from that researched in its color, style, or font, then the research results cannot accurately gauge the probability and degree of similarity between the desired trademark and previously existing ones.
Applying for Trademark Registration
• The qualifications of the applicant who is putting forward the trademark to be registered: Trademark law requires that the applicant is a natural person, legal person, or other organization.
The application for registration must specify the parameters of the desired protection for the trademark, including products, merchandise, and/or service that the applicant has manufactured, produced, and/or sold. There are 45 different categories of products or services among which the trademark's usage must be classified.
• Prior to formally applying to register a trademark, the applicant must first prepare the following documents (each application may only be classified under one category of product or service; if the desired trademark is to be employed in different categories, multiple applications ¨C one for each category ¨C must be submitted):
• One copy of the notarization of the Power of Attorney (a signature or certifying stamp is required).
• One copy of the applicant's license to produce the product or service to be trademarked (when the applicant is applying on behalf of an organization) or the proof of identification (when the applicant is applying on his own behalf); organizations oversees are not obligated to provide a copy of their license to produce/provide the product/service.
• Ten (10) copies of the trademark's likeness, each of which must be clear and easy to be affixed to a sheet of paper. The likeness/photo/image must not be longer than ten centimeters ( 10cm ), nor must its width be narrower than five centimeters ( 5cm ). If color forms a part of the trademark, the applicant must provide ten (10) colored copies of its likeness/photo/image, as well as one black-and-white copy.
• If the applicant is outside of China (including Hong Kong , Macao , and Taiwan ), he or it must provide his/its address and name in both Chinese and English.
• Preliminary approval of the trademark
Once the Trademark Office has received the application to register the trademark, it will issue a notice of the receipt of the application usually within two to three months, as long as all the required documents have been properly submitted. In the event that the Trademark Office refuses your application, the application fee is non-refundable.
If there are any changes to the name and/or address of the applicant, please contact us in writing immediately. If you receive any documents regarding the application from the Trademark Office (for example, amendments and refusals), they were forwarded by our company, and the applicant ought to make a clear reply within the required timeframe.
• Publicizing a Registered Trademark
Trademark registration is a kind of legal process. Once the trademark has been approved and publicized by the Trademark Office, and if no one brings forward any unanswered opposition within three (3) months of its publication, this trademark is formally approved and can be put into effect, subject to the exclusive rights of protection determined by law. This process takes approximately one year to a year and a half (1-1.5 years) from its first application to its final approval. The period of validity of a registered trademark shall be ten (10) years, beginning from the date of final approval. Where the registrant intends to continue to use the registered trademark beyond the expiration of the period of validity, an application for the renewal of the registration may be submitted.
• Obtaining Certification of Trademark Registration
If the application was entrusted to a qualified organization acting as an agent, it is up to that agent to obtain certification of the trademark registration.
The time required to register a trademark: A newly submitted application to register a trademark requires roughly a year and a half from submission of application to final approval. While it usually takes approximately twelve (12) to fifteen (15) months from submission to preliminary approval, it takes an additional three (3) months for the publication process, after which, if no unanswered opposition has been put forward, the Trademark Office will pass final approval. This length of time is based on the speed at which the Trademark Office can process applications.
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