China Trademark Registration Q&A – Harris Bricken Sliwoski LLP

As common followers of this weblog effectively know, we very often stress the significance of registering logos in China, and the necessity to take action promptly. See for instance China Logos: Extra Helpful and Extra Essential Than Ever. At the moment, I need to deal with a few of the questions our China trademark attorneys pretty recurrently get about China trademark registrations.

1. Does your regulation agency’s China trademark registration flat charge embrace all extra responses to acquire closing willpower the place registration is initially refused?

The China Nationwide Mental Property Administration’s (CNIPA) interactions with trademark candidates are very restricted. In that approach it is vitally totally different from america Patent and Trademark Workplace (USPTO). The one sort of response that’s generally required is an modification of the outline of products and/or providers, if the examiner disagrees with the wording. Such a response could be included within the flat charge.

Nonetheless, an attraction of a refusal could be a separate continuing and isn’t included within the flat charge.

Alongside the identical traces, responses to an opposition filed by a 3rd get together should not included within the flat charge for China trademark registration.

It’s value mentioning that one of the simplest ways to keep away from having to amend an outline of products and/or providers is to make use of phrases discovered within the Good Classification (see subsequent query in case you are questioning what the Good Classification is). That is one other approach by which CNIPA apply departs from that of the USPTO, which typically doesn’t thoughts if candidates present their very own descriptions.

2. What’s the Good Classification?

The Good Classification is a world classification of products and providers that separates the universe of products and providers that may be included on trademark registrations into 45 lessons. Good refers back to the French metropolis of that title, the place in 1957 a world settlement establishing the classification was signed. The classification is run by the World Mental Property Group (WIPO) and is just about adopted universally, drastically facilitating the registration of logos throughout borders by manufacturers.

Sadly, including trademark lessons invariably means extra charges. For that reason, manufacturers on a price range generally choose to go away sure items or providers out of a trademark software.

3. What are trademark subclasses?

China divides every Good class into subclasses, and treats every subclass as a discrete unit. A trademark registration offers the proprietor rights within the coated subclasses, however just about no rights in every other subclasses. Learn extra in China Logos: Subclasses and Primary Numbers.

4. Can the flat charge for China trademark registration be lowered by skipping the trademark search?

Sure, however we typically suggest operating a trademark search, also referred to as a trademark clearance, earlier than making use of to register a trademark. Skipping the search will save a few hundred {dollars}, however it means not discovering out about sure obstacles to registration till the applying is examined by CNIPA, a couple of months down the road. And, in case you’re questioning, all charges are nonrefundable.  

It makes much more sense to catch any issues earlier than making use of, as that gives you extra choices to acquire a China trademark registration. For instance, it could be attainable to problem an current registration on the premise that it has not been used for 3 years. Or, chances are you’ll determine to rebrand. If the battle is together with your brand, you possibly can contemplate registering your title as a substitute; if the battle is together with your title, you possibly can contemplate registering your brand as a substitute, or a slogan. And so forth.

4. Inform me extra about these cancellations for non-use.

In accordance with Article 49 of the Trademark Law, if a registered trademark has not been put in use for 3 consecutive years with no justifiable cause, any entity or particular person might apply to the trademark workplace for cancellation.

Figuring out whether or not to file a non-use cancellation (NUC) activates whether or not a conflicting trademark is definitely being utilized in commerce. Traditionally, CNIPA has set a really low threshold for establishing that the mark was utilized in commerce, with any minor occasion of utilization being sufficient to fend off an NUC. Just lately, nonetheless, CNIPA is getting somewhat more durable.

NUCs could be a very useful gizmo when a conflicting mark is getting in the best way of your China trademark registration. The three-year requirement can appear a bit lengthy at instances, however needless to say, throughout that point, different events will likely be prevented from registering the mark as effectively.

5. Is use of the mark in commerce required for China trademark registration?

No. Precise use just isn’t required for trademark registration in China, in marked distinction with america. When you register a mark, and don’t use it for 3 years, then as described above the mark is weak to a NUC request. Nonetheless, within the absence of such a request, CNIPA is not going to inquire about the usage of a mark nor require proof of use.

6. Is there required trademark upkeep?

Sure. China trademark registrations have to be renewed each ten years. Nonetheless, there isn’t any must file declarations of use, as in america.

7. Aside from an current prior registration, is there the rest that might derail a China trademark registration?

Sure. As is the case in america, CNIPA will reject functions that it considers to be descriptive or deceptive. As well as, it can deny sure functions on public coverage grounds. As an illustration, pursuant to China’s ban on cryptocurrencies, CNIPA will deny trademark functions that describe crypto-related items or providers.