Procedure for Getting a Trademark in China
With China emerging as a global tech giant in the world, it has become a favorite destination for the inventor to seek protection for their invention. At the latest EPO Index 2020, all countries show a small dip in the patent filing activity, China taking up the 4th spot has shown an increase in the filing for the said year in 2020 amid pandemic. These increases in the filing show the influx of major companies and foreign brands in China and the growing influence in the region. China has undoubtedly established itself as a place most suited for business. With such a major influx, it is important to understand the procedure for filing the trademark and the further procedure of getting it granted.
[Image Source: gettyimages]
Getting into the process
Like all other countries, China follows the first to file principle, where the applicant needs to file the trademark in China at the Trademark registry. At this stage, the applicant is not required to provide any evidence to prove the actual use or intention of the use of the mark. Any sign capable of distinguishing the goods or services from other undertakings can be registered as a trademark. This includes words, devices, letters, numerals, 3D symbols, and combinations of colors and sounds either singly or in combination. The timing for registration can vary from 12-15 months.
If there is an earlier application filed in the Paris Convention country, that applicant can claim priority within six months from the filing date of the earlier application by submitting an original certified copy of the previous application. This copy needs to be submitted at the time of filing or within three months from the date of filing. One must be clear that the scope of the goods being described in the application in China must not be larger than that of the previous application. Multi-class applications are allowed in China but it must be made very clear that in case of any opposition, the whole trademark application will not move further even if the opposition is based upon a single class.
The applicant can file for trademark registration in two ways. First, directly with China National IP administration, or secondly, apply with WIPO for international registration designating China. The NICE classification is adopted by China for the classification of goods and services. For determining the similarity the goods and services are moreover, classified into sub-classes as per nature or function. In case of inaccurate classifications, this might affect the scope of protection covered by the trademark. an application for ‘clothing, footwear, headwear’ will include Subclasses 2501 to 2505 for clothing, Subclass 2507 for footwear, and 2508 for headgear, but it does not cover other subclasses such as 2509 for socks or 2510 for gloves. Therefore, the company must need to understand that China operates more rigid sub-classification than Nice Classification.
Objections
After the formality examination, the mark will now move for substantive examination. The Trademark office can issue a notice of refusal if the mark is objectionable on relative or absolute grounds. The element of the composite mark is examined separately, hence, any similarity in any elements, if found will be raised in the relative ground of opposition. Strict adherence to the classification books is followed. On absolute grounds, three objections are raised, namely, geographical name, common name, or slogans. If a mark contains the geographical name of someplace, the objection will likely be raised. Similarly, in the case of slogans, those slogans will be rejected if they lack descriptiveness. If a mark contains any reference to a company name or trade name or any business nature of the company, there are probable chances that the mark will be deemed deceptive and will come under absolute rejection. Any company name in plain words is likely to be rejected since they don’t cover the badge of origin. Also, if the mark contains any basic legal meaning in China, they tend to be rejected. For a business, it is important that it must be registered and gets the specific approval for operating in China. If a business wants to register its mark which contains the word like ‘school,’ it is necessary that the applicant must get the approval for running that business.
Thus, such important information must be clearly understood by the applicant before getting into the registration process. The team at IPLF has helped several clients in getting their mark registered in China. For further information, please contact the IPLF team.
Author: Saransh Chaturvedi an associate at IP & Legal Filings, in case of any queries please contact/write back to us at support@ipandlegalfilings.com.
