Legislation
The Trademark Law is enacted to improve the administration of trademarks, protect the exclusive right to use a trademark, and encourage producers and traders to guarantee the quality of their goods and services and maintain the reputation of their trademarks, with a view to protecting the interests of consumers, producers and traders and promoting the development of the socialist market economy.
Trademark Law & Implementing Regulations
Trademark Law: Adopted by the Standing Committee of the National People's Congress on August 23, 1982 and came into effect on March 1, 1983; amended for the first time on February 22, 1993; amended for the second time on October 27, 2001; amended for the third time on August 30, 2013; amended for the fourth time on April 23, 2019 and came into effect on November 1, 2019.
Implementing Regulations: Promulgated by the State Council on August 3, 2002; amended on April 29, 2014 and came into effect on May 1, 2014.
Conventions
China became a member of the Convention Establishing the World Intellectual Property Organization on June 4, 1980, the Paris Convention for the Protection of Industrial Property on March 19, 1985, the Madrid Agreement Concerning the International Registration of Marks on October 4, 1989, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks on August 9, 1994, the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks on December 1, 1995 and the Marrakesh Agreement Establishing the World Trade Organization on December 11, 2001.
Trademark Administration
The Trademark Office of the China National Intellectual Property Administration (the CNIPA) is responsible for the registration and administration of trademarks in China, as well as the settlement of disputes relating to trademarks.
The CNIPA is responsible for conducting the operational guidance and policing of trademark enforcement, including formulating and guiding standards of trademark enforcement.
State Administration for Market Regulation is responsible for the organization and overall guidance of trademark enforcement.
Types of Trademarks
There are four types of registered trademarks in China: trademarks for goods, service marks, collective marks and certification marks.
A trademark for goods means a distinctive sign used on goods to distinguish the origin of the goods produced, manufactured, processed, selected or marketed.
A service mark means a distinctive sign used for services to distinguish the provider of the services.
A collective mark means a distinctive sign registered in the name of a group, association or other organization for the members thereof to use in their commercial activities as indications of their membership in the organization.
A certification mark means a distinctive sign controlled by an organization capable of supervising certain goods or services, and used by entities or individuals outside the organizations for their goods or services to certify the origin, material, mode of manufacture, quality or other characteristics of the goods or services.
Provisions in the following text concerning trademarks for goods will also apply to service marks.
Registered Trademark & Exclusive Right
A registered trademark can be obtained in China after being approved and registered by the Trademark Office through the registration application procedures.
The right holder and the registrant of the registered mark have the exclusive right to use the registered trademark as approved for the goods/services approved to register, which is protected by law in China.
The exclusive right to use a registered trademark in China shall be valid for a term of ten years starting from the date of registration, and can be renewed for another ten years before the expiry of the term.
A non-registered mark can still be used in China for business activities of an entity or individual if the use is in compliance with the relevant regulations, but the owner of such mark has no exclusive right to use the mark.
What shall bear a Registered Trademark
Cigarettes, cigars, packaged tobacco, and electronic cigarettes and other new tobacco products shall bear a registered trademark in China. Before the trademark is approved for registration, such goods shall not be produced or sold in China.
Trademark Agency
To apply for trademark registration or handle other trademark matters, one may either handle it personally or entrust it to a trademark agency that is legally established and recorded with the CNIPA.
Foreigners or foreign enterprises or other entities shall entrust trademark agencies recorded with the CNIPA to represent them for trademark applications, opposition, review and invalidation proceedings or other related matters before the Trademark Office of the CNIPA.
A trademark agency shall follow the principle of good faith, comply with the provisions of laws and administrative regulations and handle the applications for trademark registrations and other trademark matters according to the instructions of its clients. The agency shall bear the obligation to keep the clients’ trade secrets confidential.
A trademark agency shall not apply for the registration of any trademarks except its own service mark for its agency services.
Priority
An applicant for registration of a trademark who, within six months from the date of application for registration of his trademark in a foreign country, applies for registration of the same trademark in China in respect of the same goods has a right of priority in accordance with any agreement concluded between China and the foreign country, or with the international treaty to which both countries are parties, or on the principle of mutual recognition of the right of priority.
To support the claim of such right of foreign priority, the applicant shall submit, within three months from the date of filing, a certified priority document of the foreign application.
Where a trademark is first used for goods exhibited at an international exhibition sponsored or recognized by the Chinese government, an applicant for registration of the trademark may enjoy the right of priority within six months from the date of exhibition of the goods.
To support the claim of the above right of priority for the exhibition, the applicant shall submit, within three months from the date of filing, evidence to prove the trademark was used on the goods exhibited in the exhibition on the exhibition date.
How to Obtain a Registered Trademark in China
To obtain a registration of a trademark on designated goods or services and seek a protection by law, the owner of the trademark should file a registration application before the Trademark Office of the CNIPA.
Please see “Outline of CN Trademark System_Basics I_Registering a Trademark”
for the details.
Why to Obtain a Registered Trademark in Other Countries
Trademark rights are territorial in nature and are only protected in the country where the trademark is registered.
If an enterprise or individual in a country has not registered a trademark in a target country or region outside that country (for example, if a Chinese enterprise or individual has not registered a trademark in a target foreign country or region), others may preemptively register the trademark in that target country or region first. This can affect the ability of the enterprise or individual to enter the market in that target country or region, or even lead to the risk of the enterprise or individual being sued for infringement.
Therefore, in order to avoid possible adverse situations, an enterprise or individual in any country should consider applying for trademark registration in other target countries or regions outside their own country before exporting their goods or services to other target countries or regions, thereby seeking trademark protection and safeguarding their legitimate rights and interests.
How to Obtain a Registered Trademark in Other Countries
There are generally two ways for trademark owners to seek trademark protection and obtain registered trademarks in other countries or regions:
- applying for trademark registration directly to the relevant authorities of the country or region where protection is sought, and
- registering an international trademark among the member countries of the Madrid Union in accordance with the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
Direct Registration Applications
To directly apply for trademark registration in the designated country or region one by one, the trademark owner needs to submit a trademark registration application to the relevant authority of the country or region and pay the relevant official fees. After the authority examines and approves, the owner can obtain trademark registration.
The regions mentioned above include the Benelux Union (Belgium, the Netherlands and Luxembourg), the European Union (currently has 27 member states, such as Belgium, the Netherlands, Luxembourg, Germany, France, Sweden, Spain, etc.), the African Intellectual Property Organization (OAPI currently has 17 member states, such as Central Africa, Congo, Guinea, Nigeria, etc.), and the African Regional Intellectual Property Organization (ARIPO currently has 22 member states, such as Uganda, Zimbabwe, Tanzania, etc.).
The regulations and costs of specific countries or regions are different. Generally, the costs in developed countries are higher, and the costs in developing countries are lower. The registration time generally takes at least one year, and some take more than two years.
Please contact us directly when you have such needs.
International Trademark Registration
International trademarks are registered among the member countries of the Madrid Union according to the Madrid Agreement and the Madrid Protocol.
The Madrid Union refers to the union for international trademark registration composed of countries or intergovernmental organizations to which the "Madrid Agreement" and the "Madrid Protocol" apply. The Madrid Union has more than 110 contracting members, covering more than 130 countries. China, the United States, Germany, France, the United Kingdom, Italy, Japan, South Korea, Russia, Australia, Sweden, Norway, Switzerland, Spain, the African Intellectual Property Organization, etc. are members of the Madrid Union.
Compared with directly applying for registration abroad one by one, the Madrid international trademark registration has the advantages of wide coverage, convenient and fast procedures, and relatively low costs.
Herein two aspects will be further described, applying for international trademark registration with China as the country of origin, and applying for territorial extension designating China.
I. International trademark registration with China as the country of origin
An international trademark registration with China as the country of origin is an international trademark registration filed by a Chinese applicant among the member states of the Madrid Union in accordance with the provisions of the Madrid Agreement and the Madrid Protocol.
Where to file
Applicants applying for international registration of their trademarks with China as the country of origin shall proceed with their application to the International Bureau of the World Intellectual Property Organization (“the International Bureau”) through the Trademark Office.
Madrid Agreement
Applicants whose trademarks have been registered with the Trademark Office (“basic registration”) may apply for international registration of the trademarks in accordance with the Madrid Agreement.
The countries designated by the applicant for protection should be solely members of the Madrid Agreement.
Subsequent designation, renunciation and cancellation of international trademark registrations with China as the country of origin under the Madrid Agreement are handled through the Trademark Office and submitted to the International Bureau.
Registrants can manage changes like transfers of ownership, deletions, changes and renewals of international trademark registrations with China as the country of origin under the Madrid Agreement, either through the Trademark Office and to the International Bureau or directly with the International Bureau.
Subsequent designation: after a trademark is internationally registered, the international trademark registrant can request to extend the protection of an existing international trademark registration to additional countries for all or part of the designated goods and services.
Renunciation: the international trademark registrant may voluntarily relinquish trademark protection on all or partial goods or services in specific designated counties while maintaining the registration in others.
Cancellation: an international trademark registration may be canceled on all or part of the goods or services in all contracting members, either by a trademark office or due to dependency on a basic mark.
Transfer: the owner of an international trademark registration can transfer the exclusive right to his international registered trademark to another person. The assignee shall have a genuine and effective business office in the territory of or a residence or be of nationality in the contracting member.
Deletion: an international trademark registrant may delete partial goods or services in all or part of the designated contracting members.
Change: If the name or address of the registrant of the Madrid International Trademark Registration changes, the registrant may apply for change of the name or address. If the name or address of the agent registered for the Madrid International Trademark Registration changes, the registrant may apply for change of the agent's name or address.
Madrid Protocol
If applicants have registered their trademarks with the Trademark Office (“basic registration”) or they have submitted a trademark registration application to the Trademark Office and such application has been accepted (“basic application”), they may apply for international registration of the trademarks in accordance with the Madrid Protocol.
The country designated by the applicant for protection is a solely contracting member to the Madrid Protocol, or a contracting member to both the Madrid Agreement and the Madrid Protocol.
Subsequent designation, transfers of ownership, deletions, renunciation, cancellation, changes and renewals of international trademark registrations with China as the country of origin under the Madrid Protocol are handled, either through the Trademark Office and to the International Bureau or directly with the International Bureau.
Who may apply
Applicants shall have a genuine and effective business office in China, or have a residence in China, or must be of Chinese nationality.
Entities or individuals in Taiwan Province can file international registration applications through the Trademark Office of the CNIPA.
However, entities or individuals in the Hong Kong and Macao Special Administrative Regions cannot file international registration applications through the Trademark Office at present.
Goods/Services
Goods or services designated in the application for international registration of trademarks shall not go beyond the scope of the goods or services in basic registration or basic application of China.
Filing & Official Fees
After receiving the application documents with complete formalities, the Trademark Office will notify the applicant or agent to pay the official fees. The applicant or agent should pay the relevant official fees to the Trademark Office within 15 days from the date of receipt of the notification.
If the applicant or agent fails to pay the official fees within the time limit, the Trademark Office will not accept the application and notify the applicant.
After receiving the official fees as scheduled, the Trademark Office will submit the application to the International Bureau.
Registration
After receiving an international registration application that meets the requirements, the International Bureau will conduct a formality examination.
Once the examination is passed, the trademark will be registered in the International Register, and the international registration of trademarks will be announced in the "WIPO International Trademark Gazette". The "International Registration Certificate" will be issued to the trademark registrant or the agent, and the intellectual property authorities of the designated country/region will be notified.
Substantive Examination
The intellectual property authorities of the designated country/region will conduct a substantive examination of the international registration (it usually takes 12 or 18 months) and make an examination decision in accordance with the local national/regional regulations.
If an authority agrees to protect the international registered trademark, it will issue a statement of grant of protection.
WIPO will record the decisions of each authority in the International Register and notify the international trademark registrant.
Office Action/Refusal
The designated country/region conducts a substantive examination of the international registration and may issue an office action or a provisional refusal notice, which may partially or totally refuse protection of the international registration trademark in that specific territory. This decision does not impact the decisions of other authorities.
In response to the refusal decision, the registrant can directly file a review application with the authority in order to obtain protection.
Announcement
The World Intellectual Property Organization shall announce the issues concerning the international registration of trademarks, and the Trademark Office shall not separately make an announcement.
Term & Renewal
Under the Madrid Agreement and the Madrid Protocol, an international trademark registration has a term of ten years, calculated from the date of international registration.
After the term of the Madrid trademark international registration expires, the registrant can directly renew the registration with WIPO to continue the use.
Six months before the expiration of the term, the International Bureau will notify the registrant of the renewal matters. If the registrant fails to apply for renewal before the expiration date, the International Bureau will grant a six-month grace period. If the renewal is still not applied for within the grace period, the International Bureau will cancel the international registration. If applied within the above period, the term of the trademark international registration can be renewed for 10 years.
II. Applications designating China for territorial extension
As mentioned above, for international trademark registrations, the relevant intellectual property offices of the designated countries/regions will conduct substantive examinations in accordance with the laws of their respective countries/regions.
Thus, for international trademark registrations extended to China, the Chinese Trademark Office will review them in accordance with the Trademark Law of the People's Republic of China. After the examination is passed, a statement of grant of protection will be sent to the International Bureau; if the international registration is partially or totally refused, a notification of provisional refusal will be sent to the International Bureau.
Examination
The Trademark Office shall, within the time limit to notify the refusal specified in the Madrid Agreement or the Madrid Protocol ("time limit to notify the refusal") and in accordance with the relevant provisions of the Trademark Law, examine the extension application for territory designating China, make a decision and notify the International Bureau.
If the Trademark Office does not send a notification of provisional refusal or partial refusal within the time limit to notify the refusal, the extension application for territory shall be deemed to be approved.
Where the applicant for extension of the territory designating China requires to protect a trademark involving a three-dimensional sign, a combination of colors, or a sound mark, or a collective or certification mark, it shall, within three months after the date of registration of the trademark with the International Register of the International Bureau, submit the relevant materials to the Trademark Office through a trademark agency recorded with the Office. If it fails to submit the relevant materials within the time limit, the Trademark Office shall refuse the extension application for territory.
Opposition
For the applications for extension of the territory designating China, within three months from the first day of the month following the publication of the World Intellectual Property Organization's International Trademark Gazette, an opponent who meets the relevant requirements of the Trademark Law may file an opposition application with the Trademark Office.
The registrant opposed by the opponent may file a response within 30 days from the date of receipt of the notification of refusal forwarded by the International Bureau. The response and relevant evidence materials shall be submitted to the Trademark Office through a trademark agency recorded with the Office.
The Trademark Office shall, within the time limit to notify the refusal, notify the International Bureau of the information related to the opposition application in the form of a refusal decision.
Renewal
For the international trademark registrations protected in China, the term shall be calculated as of the date of international registration or the date of subsequent designation. Before the expiration of the term, the registrant may apply to the International Bureau for renewal.
If the registrant fails to apply for renewal within the term, a six-month grace period will be granted. The Trademark Office shall, after receipt of the renewal notice from the International Bureau, conduct examination in accordance with the law. If the International Bureau notifies the Trademark Office of the failure of renewal, the internationally registered trademark shall be cancelled.
Assignment
Where a transfer of ownership is requested for the application for extension of territory designating China, the assignee shall have a genuine and effective business office in the territory of, or a residence or be of the nationality of the country of the contracting member.
Where the assignor does not transfer all identical or similar trademarks on the identical or similar goods or services, the Trademark Office shall notify the registrant of making rectifications within three months as of the issuance date of the notification. Where the rectifications fail to be made within the time limit or the transfer is likely to cause confusion or have other adverse effects, the Trademark Office shall make a decision that such transfer has no effect in China and make a declaration to the International Bureau.
Deletion
Where a deletion is requested for the application for extension of territory designating China, if the goods or services after deletion do not meet the classification requirements of the relevant goods or services of China or goes beyond the scope of originally designated goods or services, the Trademark Office shall make a decision that such deletion has no effect in China and make a declaration to the International Bureau.
Cancellation
A request to cancel a registered trademark on the grounds that the registered trademark has become a generic name of its designated goods or has not been used for three consecutive years without justified reasons, shall be filed to the Trademark Office after expiration of three years as of the expiration date of the time limit to notify the refusal of international registration application of the trademark.
Where, upon the expiration of the time limit to notify the refusal, the international registration application of the trademark is under the review of refusal or opposition proceedings, the cancellation request shall be filed to the Trademark Office after expiration of three years as of the date when the decision on grant of protection made by the Trademark Office comes into effect.
Invalidation
Where a registered trademark violates any of the absolute grounds of the related regulations, a request shall be filed, after the expiration of the time limit to notify the refusal of international registration application of the trademarks, to the Trademark Office to declare the registered trademark invalid.
Where, upon the expiration of the time limit to notify the refusal, the international registration application of the trademark is under the review of refusal or opposition proceedings, the invalidation request on the absolute grounds shall be filed to the Trademark Office after the decision on grant of protection made by the Trademark Office comes into effect.
Where a registered trademark violates any of the relative grounds of the related regulations, a request shall be filed, within five years from the expiration date of the time limit to notify the refusal of international registration application of the trademarks, to the Trademark Office to declare the registered trademark invalid.
Where, upon the expiration of the time limit to notify the refusal, the international registration application of the trademark is under the review of refusal or opposition proceedings, the invalidation request on the relative grounds shall be filed to the Trademark Office within five years from the date when the decision on grant of protection made by the Trademark Office comes into effect.
For malicious registrations, the owner of a well-known trademark is not subject to the five-year time limit.
Provisions not applicable
The following provisions of the Trademark Law will not applicable to the related matters of the international trademark registration:
- the provisions related to examination periods;
- the provisions related to joint application by the assignor and the assignee to register a trademark assignment;
- the provisions related to the application for division of parts that have been preliminarily approved; and
- the provisions related to recording changes of name or address of a trademark registrant.
Recent Statistical Data
2024:
China received 7,039 applications for Madrid international trademark registration submitted by domestic applicants. As of the end of 2024, the cumulative number of valid Madrid international trademark registrations by Chinese applicants reached 60,800.
The number of Madrid territorial extension applications designating China submitted by foreign applicants reached 19,900 (one trademark, multiple classes). China completed substantive examination of 49,800 Madrid territorial extension applications.
2023:
China received 6,196 applications for Madrid international trademark registration submitted by domestic applicants. As of the end of 2023, the cumulative number of valid Madrid international trademark registrations by Chinese applicants reached 56,300.
The number of Madrid territorial extension applications designating China submitted by foreign applicants reached 20,200 (one trademark, multiple classes). China completed substantive examination of 60,700 Madrid territorial extension applications.
2022:
China received 5,827 applications for Madrid international trademark registration submitted by domestic applicants. As of the end of 2022, the cumulative number of valid Madrid international trademark registrations by Chinese applicants reached 52,400.
The number of Madrid territorial extension applications designating China submitted by foreign applicants reached 24,900 (one trademark, multiple classes). China completed substantive examination of 60,200 Madrid territorial extension applications.
2021:
China received 5,928 applications for Madrid international trademark registration submitted by domestic applicants. As of the end of 2021, the cumulative number of valid Madrid international trademark registrations by Chinese applicants reached 49,000.
The number of Madrid territorial extension applications designating China submitted by foreign applicants reached 27,000 (one trademark, multiple classes). China completed substantive examination of 61,000 Madrid territorial extension applications.
2020:
China received 7,553 applications for Madrid international trademark registration submitted by domestic applicants. As of the end of 2020, the cumulative number of valid Madrid international trademark registrations by Chinese applicants reached 44,200.
The number of Madrid territorial extension applications designating China submitted by foreign applicants reached 24,500 (one trademark, multiple classes). China completed substantive examination of 62,600 Madrid territorial extension applications.
More introductive information of Chinese Trademark System is under preparation.
If you have any question about the protection of intellectual property rights, please feel free to send us emails.
For patent-related matters, please send to info@afdip.com. For trademark/ litigation/ legal matters, please send to info@bhtdlaw.com.
