There are two ways you can apply to register a trade mark in China:
- directly through the Chinese Trade Marks Office
- from Australia using an international filing process known as the Madrid Protocol.
Filing an application through the Chinese Trade Marks Office (CTMO) is commonly referred to as direct filing. Keep in mind that filing this way means your date of application becomes your date of priority. Having an earlier filing date may be important if someone else is applying for the same trade mark in China, due to the first to file rule.
To register your trade mark in China using the direct filing method, you will need to use an Australian IP professional experienced in Chinese trade mark law or a reliable agent in China specialising in intellectual property.
One benefit to applying directly to the CTMO is that you can nominate your own sub classes, whereas in a Madrid protocol application your examiner will choose them for you, based on your application.
It is extremely important to classify the proposed goods and services correctly in a Chinese trade mark application and specialist advice should be sought as early as possible. If the names of the goods/service items are not in the International Classification and the List of Acceptable Names of Goods and Services, you only get one chance to amend the specification before the application is rejected by the CTMO. If the amended names are not acceptable to the examiner, the application will be rejected and you will need to re-file the application and lose the original priority date.
What you will need
- Name and address of the applicant: for a foreign company or individual, a Chinese version of the name should be provided.
- Sample of the trade mark: a high quality representation of the trade mark is needed together with the meaning of the mark (if any).
- Classes and description of goods/services on which the trade mark is used: we recommend you use the names of the goods/service items in the International Classification and the List of Acceptable Names of Goods and Services.
- Power of Attorney: this should be signed by the applicant, no notarization or legalization is required.
- A copy of the Certificate of Incorporation if the applicant is a company.
- A copy of a Passport or Photo ID Card is required if the applicant is an individual.
- Letter of Consent: you will need this if the trade mark is a picture or portrait of an individual who holds the rights to the image.
- A copy of the certified copy of first foreign application: if your application claims foreign priority.
When you file your trade mark application with the Chinese Trade Marks Office (CTMO), the date they receive the application is the official filing date. This is the date used to determine your prior rights against third parties. (Note that unlike Australia, the date of registration does not retrospectively date back to the application date; registration will only occur after the 90 day opposition period expires).
The next stage of the application process is the examination.
This starts with a formalities check where the CTMO checks that all the required information and documents have been provided. The CTMO will then undertake a substantive examination to identify any conflicting applications or registrations and consider whether your trade mark meets other tests under the Chinese trade mark law.
This process can take up to nine months. The CTMO will then either reject the application due to issues raised during their examination, or they will provide a preliminary approval allowing the application to move to the next stage, which is the opposition period. The opposition period, certificate of registration, and reasons for cancellations are the same for both the Madrid and direct filing methods of application.
If the application goes smoothly and without any oppositions, you can expect the process to take 12 to 15 months from the filing date to receiving your Certificate of Registration.
Once registered, renewal of your registration is due ten years from the date of approval of registration.
You can apply for a trade mark in China using the Madrid Protocol. You can also use the Madrid protocol to apply to multiple countries at once.
You need to have an identical Australian trade mark application or registration to use the Madrid protocol.
If you apply using the Madrid protocol, your date of application will be listed as your Australian filing date, if you filed within the last six months. This can be important if someone else is applying for your trade mark in China, due to the first to file rule.
Filing through IP Australia
This is a prerequisite. Before filing an application for international registration, you need to have filed an application for an Australian trade mark with IP Australia. Or you must have a recent registered Australian trade mark that is less than 6 months old. This is known as your basic or home country application/registration.
When you file via the Madrid Protocol, the international trade mark must be the same as the Australian trade mark or registration, and the scope of goods or service can’t be broader than it is in Australia.
You lodge you application with IP Australia, who will then forward your application to the World Intellectual Property Organization (WIPO) for processing. They are an agency of the United Nations which undertakes administrative processing and records the status of your application.
Formalities examination by WIPO
WIPO conducts a formalities examination of your application, essentially to make sure the paperwork is in order. Next they pass on the application to the Chinese Trade Marks Office (CTMO).
Substantive examination by the CTMO
The CTMO will conduct substantive examination of your application to consider whether it meets the tests for registration under the Chinese trade marks law.
This process can take up to nine months. The CTMO will then either reject the application due to issues raised during their examination, or they will provide a preliminary approval allowing the application to move to the next stage, which is the opposition period.
The opposition period, certificate of registration, and reasons for cancellations are the same for both the Madrid and direct filing methods of application.
The opposition process is the same for both Madrid protocol applications and direct filing with China. Once the CTMO has issued a preliminary approval of your application, other people or companies have three months to object to the registration of your trade mark.
If no one has lodged an opposition then the CTMO will grant your trade mark about one month after the opposition period has expired.
People can object on relative grounds - they believe that it conflicts with an existing trade mark. They can also object on grounds that it breaches Chinese trade mark law.
If an opposition is filed and the CTMO rejects it and grants the trade mark, the decision is final.
But if the CTMO agrees with the opposition, you can appeal and request a review from the Trademark Review and Adjudication Board (TRAB). The decision from the TRAB can take up to one year.
If you are unsuccessful at the TRAB, you can appeal first to the Intellectual Property Court and then the High Court. Each appeal takes 6 to 12 months.
Certificate of Registration
This process is the same for both Madrid protocol applications and direct filing with China. If the application goes smoothly and without any opposition, you can expect the process to take 12 to 15 months from filing to receiving your Certificate of Registration.
Your trade mark is valid for ten years, and can then be renewed.
Your trade mark can be cancelled if:
- it was acquired by fraud
- it is unused for three consecutive years
- it becomes the generic name for the goods or services in its class
- changes are made to the trade mark without approval from the CTMO.
- changes are made to the name or address of the person who holds the trade mark without approval from the CTMO.