The duration of trademark rights is ten years calculated from the date of registration and its term is renewable for another ten years when its term expires. There is no limitation on the times for renewal. So a trademark can be for life after registration if the registrant has paid renewal fee each time when its term expires. However, a registered trademark is subject to cancellation if not in use for three consecutive years. Use of a trademark includes its use on goods, packages or containers, or in trading documents, and use in advertising, exhibition or other business activities which can effectively prevent cancellation attack.

Generally speaking, a trademark application in China will go through these complex procedures, such as preliminary examination, substantive examination during which some office actions will incur, publication for opposition which will last for three months and finally granting trademark registration certificate or refusing the registration. The revised Chinese Trademark Law has set a nine-month time window from filing the application till receiving trademark registration certificate or refusal notice.

China adopts a strict first-to-file rule for obtaining trademark rights. The first applicant to file an application for registration of a trademark will pre-empt all other later applications for the same or similar trademark in the same Class. Where an application to register a trademark has been rejected due to its identity or similarity to a previously registered/applied trademark, evidence of prior use will not be helpful for the purpose of challenging the registration, unless the trademark is proved to be “well-known” under the Paris Convention, which is hard to prove. Since no pre-file use is required, some bad-faith registration can easily happen, so the trademark owner shall attach importance to make the first file before putting their brands into Chinese market.

China strictly adopts the International Classification of Goods and Services formulated pursuant to the Nice Convention (“Nice Classification”), so the applicant has better use the standard terms covered by the Nice Classification so as to avoid unnecessary office action on the specification of the goods/service items. From May, 2014 when China adopted its revised Trademark Law, multi-class application is allowed now.

Conventional priority can be claimed within six months from the date of filing outside China. The certified priority document must be submitted within three months from the date of filing in China, however, the information such as the application number, the application date and country must be provided when filing.

A trademark application may be provisionally refused by the China Trademark Office (“CTO”), if, after examination, it is found that the trademark is devoid of distinctiveness, or identical with or similar as prior marks in respect of identical/similar goods or services. When a trademark application is refused, the applicant can appeal to the Trademark Review and Adjudication Board (“TRAB”) against CTO’s provisional refusal within 15 days after receiving CTO’s provisional refusal notice and this 15-day appealing deadline cannot be extended by any means. If not satisfied with TRAB’s review decision, the applicant can further appeal to the Chinese Intellectual Property Court (first instance) for further judgment which is further appealable to the second instance Chinese court whose judgment will be final.

Any concerned parties can, within three months from the date of publication, oppose against an accepted trademark by filing an opposition application with CTO who shall make a written decision, which can be appealed to TRAB if any party is not satisfied with CTO’s opposition decision. If not satisfied with TRAB’s decision, any party can further appeal to the Chinese Intellectual Property court (first instance) for further judgment which is further appealable to the second instance Chinese court whose judgment will be final. If the applicant is a foreign individual or entity, then they must engage a Chinese trademark agency as their agent for filing trademark applications or handle any other trademark matters in China.

The Chinese trademark practice has undergone some substantive changes after the China adopted its revised Trademark Law from May 1, 2014. To learn these changes, you are encouraged to read our China IP Watch article comment on revised Chinese Trademark Law by clicking here.