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Peculiarities of Obtaining Legal Protection for Trademark in China

Dec. 28, 2016

With the territorial expansion of business, the issue of obtaining the legal protection for a designation individualizing the goods manufactured or the services provided in foreign countries arises with increasing frequency. Recently, along with the CIS countries (Byelorussia, Kazakhstan, Ukraine), China has become very popular for registration of a trademark.

In order to obtain the legal protection for a trademark in China, there are two possible variants: the national procedure by filing a relevant application directly to the Chinese office and filing an international application to the World Intellectual Property Organization under the Madrid system with the indication of China. The above mentioned variants have a number of significant differences in terms of periods, financial costs, as well as in terms of the territorial cover of the legal protection.

Below we shall elaborate each of these procedures.

The first difference is that when filing a national application in China, it is necessary to resort to the services of foreign patent attorneys, as only authorized representatives can represent the interests of foreign applicants in China, as well as in other foreign countries. This, in turn, leads to increased costs already at the stage of filing an application, as your costs will include the fee of both the Chinese attorneys and the Russian attorneys, who interact with each other in order to provide a qualitative service at filing an application in accordance with the norms of regulations of China. In addition, the translation of the application into Chinese will be required, what also leads to increased costs. 

In case if China is not the only country where you plan to develop your business, it is advisable to file an international application under the Madrid system indicating China – in future you will always be able to expand the effect of your international registration to other countries that are the members to the Madrid Protocol and/or agreement. It should be noted that in order to take advantage of this procedure, it is necessary to have a basic application or certificate in the country of origin (for example, in the Russian Federation). Such an application shall be filed to the office of origin (Rospatent, in this case), where it shall be checked for the compliance with the basic application. Then from Rospatent the application shall be sent to the World Intellectual Property Organization, from there the application shall be already sent to the office of the countries indicated in the international application, for example, to China. Thus, in this case, the involvement of foreign patent attorneys at the stage of filing an application is not required. It means that your costs, along with the fees, will include only the fee of the Russian patent attorneys. You may need the assistance of foreign attorneys only if you have to prepare a response to the preliminary refusal.

Along with the financial component, the duration of the procedure for obtaining the legal protection in China plays an important role.

For example, in case of filing a national application, it may take you about two years or more to register the mark; in case of filing an international application, the registration can be expected in a shorter period, provided there have been no preliminary refusals.

It should be noted that until recently in China the applicant has had to file a separate application for each class of goods/services of interest to him, what led to a significant increase in costs. However, at present there is a possibility of filing a multiclass application, that is, the application containing several classes of the ICGS.

When making a decision to register a trademark in China, it is also necessary to take into account the specifics of the legislation of this country, in particular, when composing the applied list of goods and/or services.

So, in case your base application is in Russia or the certificate contains, for example, such goods of the 28th class of the ICGS as “gambling devices for gambling; circles for roulette rotating; slots [slot machines]; gambling chips,” then these goods shall not be accepted by the Chinese office, and if they can not be excluded when filing an application, the preliminary refusal shall be issued, which contains a reference to the statutory provision, according to which these goods are prohibited in China. 

It should be noted that the deadline for responding to a preliminary refusal in China is rather short and is 15 days from the date it was received, during which you need, in case of interest, resort to the help of the Chinese attorneys to file an appropriate response in due time.

Regarding the extension of the validity period of the exclusive right to a trademark in China, then if the mark has been registered in accordance with the national procedure, the extension procedure must be carried out through the patent attorneys of China. In the event that the legal protection on the territory of China has been granted under the international registration, the extension of this registration every 10 years should be carried out through the WIPO, what excludes the need for involving patent attorneys of China.

The particular attention should be paid to the territorial cover of the legal protection, when it comes to a trademark in China. Thus, the application for registration of a trademark in China (both under the national and international procedures) shall not be applied to Taiwan, Macao and Hong Kong, on the territories of which there are their own rules and regulations of registration and, accordingly, there are their own peculiarities of the legislation. In order to obtain the legal protection on these territories, independent national applications should be filed by involving the relevant representatives (patent attorneys). 

Thus, it is advisable to take into account the existing peculiarities of obtaining the legal protection in China. When choosing this country for registration of a trademark, you should take into account a number of aspects in order to choose the variant of filing an application by the most proper way, which will allow achieving the desirable result in conjunction with the financial preferences for your business.

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Author of article

Anastasiya Kiryuhina

Anastasiya Kiryuhina

Trademark Attorney