China is one of the most interesting markets for exports and made in Italy. It is therefore useful to have a general idea on how to register a trademark in China, taking into consideration that trademark filing fees have been reduced by 50% since 2017.
In this post we talk about:
Which trademarks can be registered in China
Shall be registered any visual signs capable of distinguishing the product or service of a natural person, legal entity or any other organization from those of third parties, including words, designs, letters, numbers, three-dimensional marks, combination of colors and combination of signs.
Reduction of Chinese trademark fees
Effective from April 1, 2017, the trademark official fees for the filing of a trademark application in China have been significantly cut, having been reduced by 50%.
At this time, it is particularly convenient to protect your trademark in China, because you have the opportunity to protect it with a considerable save of costs compared to the past.
Tax reduction concerns not only the filing of the mark, but also all procedures in China relating to trademarks. More specifically, China has reduced official fees by 50% for all the following activities:
- Filing of a trademark application;
- Fees for each item of goods/service in excess of 10;
- Renewal of the trademark;
- Surcharge for late renewal;
- Recordal of the assignment;
- Recordal of change of name and/or address;
- Recordal of a license agreement;
- Response to the Office Action;
- Filing of an opposition;
- Filing of a cancellation action;
- Filing of an invalidation action
Trademark filing and registration of a trademark in China
After the trademark filing, applications are examined to the formality and substance (possible conflicts with prior rights).
If the Examiner finds some obstacles to the registration, an office action is issued. An application that is refused by the Trademark Office may be appealed to the Trademark Review and Adjudication Board within fifteen days from receipt of the notification. If the decision of the Trademark Review and Adjudication Board is unfavorable, it is possible institute a legal action in Court within 30 days from receipt of the notification.
In the event no office action is issued by the China Trademark Office, or in case you have overcome the refusal, trademark application will be published in the Trademark Gazzette.
Third parties will have three months to file an opposition to the registration.
2019 news on bad faith trademark
During the month of April 2019, important amendments were made to the Chinese Trademark Law, which will come into force on November 1st, 2019.
A special importance has the introduction of the refusal to register trademarks which have been filed in bad faith, without any real intention to use them.
This amendment in law will help to fight a phenomenon which is well known from many Italian companies, namely the filing in China of trademarks which are similar with or identical to their own trademarks, made by criminals for the sole purpose of beating the real owners on time, anticipating them in the registration of their trademark in China and with the goal of extorting money.
It is very likely that with the new rules it will become much more difficult to do this, as well as other typically incorrect behaviors, such as filing trademarks which are identical to or similar with other people’s distinctive signs which are different from trademarks (for example, trademarks identical with company names or domain names).
The attention to the phenomenon of bad faith is such as to involve the trademark representatives, who must refrain from assisting the subjects acting in bad faith, under penalty of a fine.
Validity and duration of a trademark in China
A registration is valid for ten years starting from the date of registration and can be renewed indefinitely, each time for ten years.
Advice on the registration of a trademark in China
Beside the registration of the mark in Latin characters, it is advisable to register its version in Chinese characters, both to strengthen its legal protection and by reason of that, doing so, public will be able to read and remember more easily the brand
Eva Troiani law firm is at your disposal for further clarification on how to register your trademark in China.