Commercial entities can register designations of their products on the territory of any state. China is a party to all international agreements and is a member of the WTO, so the establishment of legal protection of trademarks is possible not only through the national patent service of China, but also under the Madrid system. In this article, we will examine what options can be used for registration of marks in China, and what documents will have to be executed by the applicant.
Enforcement of trademark rights allows to obtain protection against illegal use of the object by competitors or other entities. China is a member of the WTO (World Trade Organization), which imposes higher requirements for the protection of industrial and commercial property. Therefore, the country applies not only the norms of national law, but also the acts of the international level.
Rules for registration of trademarks in the PRC are characterized by the following features:
The national application must be submitted independently to the Patent Office of the State Council of the People's Republic of China - the documents must be prepared in Chinese, and local patent attorneys must represent the interests of foreign companies;
Documents may be filed under the Madrid system - in this case, the application is allowed to specify more than one state party to the Madrid Agreement;
The territory of special administrative units (Hong Kong, Macao) have their own registration rules - so the certificate issued by the PRC Patent Office will not automatically extend the protection regime to the territory of these zones.
Only commercial entities - legal entities and entrepreneurs - can secure the rights to the designation. Accordingly, exclusive rights can be used and transferred only in the framework of commercial activities.
For foreign companies the best option for registration will be filing under the Madrid system. In this case:
All documents can be filed through the patent office where the company is located or registered, and translation into Chinese will only be required at the examination stage;
Since one application is filed for several countries at once, the applicant has to pay a single fee - this significantly reduces costs, compared to the registration in individual states;
Registration certificate of the international level will be valid in the territory of all countries specified in the application - no additional confirmation through national services is required.
Thus, the company needs to determine in advance in which countries, other than China, it plans to use the trademark for its products. Otherwise, it is possible to face the fact that the designation is used by others, and claims can be made only if there is a certificate.
The requirements for the content of the application documentation for trademark registration in China comply with all international standards. Regardless of the method of application chosen, the applicant must submit:
application, indicating the registration data of the company, information about the patent attorney;
designation, expressed in verbal, graphic, combined or other form;
description of the designation disclosing its essence and meaning;
list of product groups according to the classifier of the Nice Classification - the applicant must immediately indicate for which categories of goods the protected designation will be used.
When applying directly to the Patent Office of the State Council of the People's Republic of China, all documents are filled out in Chinese. For an international application, a Chinese translation will only be required at the examination stage.
Registration actions on the application also comply with generally accepted rules. The applicant has to go through the following steps:
submission of documents in written or electronic form - information about the received application will be published in the Bulletin of the Patent Service and the applicant will receive national or conventional priority;
formal examination will be carried out, during which the composition and correct filling in of the forms and forms will be checked;
The key is the examination of the designation - this procedure includes an information search, confirmation of the distinctiveness of the mark, the identification of prohibitions and restrictions on registration;
If there are no comments, a decision on the registration of the designation is made - information about the owner of the right and the registered object will be entered in the register and the applicant will receive a certificate.
Similar rules apply to registration in special territorial zones (Hong Kong and Macao), as well as in the Republic of Taiwan. However, there is a simplified registration procedure in these zones and in Taiwan, including the reduction of the total examination period.
Having received a registration certificate, the right holder can implement the legal protection regime:
to use the designation for their own products, in advertising and marketing campaigns, formation of brand identity, etc;
sell or transfer the exclusive rights to other persons - for this purpose the assignment agreements and license agreements shall be executed and registered with the Patent Office of the State Council of the People's Republic of China;
use protection measures when infringements are detected - the right holder may submit a written demand to prohibit illegal actions, apply to the court for damages or compensation.
The most serious violations of the security regime are subject to administrative or criminal liability. Also, under a judicial act, the violator will have all counterfeit products, means of production confiscated, and the company may be forcibly closed.
If you need help registering a trademark in China, use the services of our company. We will help to draw up the application documentation, represent your interests in the submission and consideration of documents. Preliminary consultation on all conditions of cooperation you can get on the phone numbers listed on the site, or via the feedback form.