A: Any foreign person or foreign enterprise intending to apply for the registration of a trademark or for any other matters concerning a trademark in China shall appoint any of such organizations as designated by the State to act as its or his agent. ( According to the provision of Article 18 of the Trademark Law)
Q: What is SAIC?
A: SAIC (State Administration for Industry and Commerce of the People's Republic of China ) is the competent authority directly under the State Council in charge of market supervision/regulation and related law enforcement through administrative means.
Q: What is STO?
A: STO (State Trademark Office) under the State Administration for Industry and Commerce is in charge of the registration and administration of trademarks nationwide, specifically responsible for such issues as registering trademarks on goods, service marks, collective marks, certification marks and so on; dealing with oppositions to registered trademarks and other matters concerning modification, assignment, renewal, cancellation of registered trademarks and reissue of trademark certificates; providing guidance to local administrative authorities for industry and commerce (AICs) in handing trademark infringement and counterfeiting cases; determining and protecting well-known trademarks in accordance with law; supervising the operation of trademark agencies; developing regulations and concrete measures in respect of trademark registration and administration; implementing international trademark treaties and agreements in China and undertaking the international exchanges and cooperation in the field of trademark.
Q: What is the importance of a search prior to filing?
A: China adopts a first-to-file rule. A t rademark vital to business must be registered in order to be fully protected by Chinese law and to obtain exclusive rights to this valuable asset. The first step of a trademark search helps to indicate the trademark you wish to use is available. However, the search of a trademark is ONLY for reference and has no legal effect according to international practice. Since the databases lag of necessity behind real time, there is always some risk that a mark that appears to be available has been applied for quite recently by another party. Also, the Examiner may determine that another mark is in conflict and will confuse customers and the public.
Q: How is the fee paid?
A: The registration fee has to be paid to the STO's account from the account of the entrusted agent before the trademark filing.
Q: How does the process work from the time that the application is made, to receiving questions from the STO Examiner, to publication, to registration?
A: After the acceptance of the application for trademark registration by STO, the procedure for trademark registration includes the following periods: formality check, substantive examination, being preliminarily approved and published, opposition and being approved for registration. The opposition period includes three months from the date of the publication. Any person may, within this period, file an opposition against the trademark that has, after examination, been preliminarily approved. Where any party concerned is dissatisfied with the State Trademark Office's decision of refusal of the registration application, decision of opposition or decision of cancellation, such party may apply for a review to the Trademark Review and Adjudication Board. Where any party concerned considers a registered trademark to be improperly registered, such party may apply for cancellation of the trademark to the Trademark Review and Adjudication Board. Where any party concerned is dissatisfied with the decision of the Trademark Review and Adjudication Board, such party may institute legal administrative proceedings with Beijing No.1 Intermediate People's Court.
Q: Is it necessary to translate the trademark/name into Chinese? Does one have to declare during the process at some point whether the word has any meaning in Chinese?
A: It is not mandatory to translate the trademark/name into Chinese . But a description of the trademark/name would be helpful to make the trademark more distinct. According to the ¡°Trademark Examination Guidelines¡± issued by STO, the Chinese translation of an English mark is also protected by Trademark Law of China. For example, if the mark ¡°Crown¡± has been successfully registered in China , its Chinese translation will be considered as a similar mark and shall not be registered as a trademark. Discussion of this aspect with qualified legal counsel is advised, particularly due to the possibility for various translations from English to Chinese, and the potential market advantage of registering a specific Chinese name and/or logo together with the English version of a mark.
Samples of similarity
(Chinese meaning of CROWN)
(Chinese meaning of ROUGE ET NOIR)
Q: Is an official filing receipt generated by the SAIC?
A: A certificate of filing is issued by SAIC and will be translated for client by ETO.
Q: When can a response be expected from STO?
A: The trademark examination takes about 3 years before the publication. During this period, we track the status of the examination of the mark. After the examination period, ETO can file an inquiry to SAIC if no publication of the mark has issued by that time.
Q: Is the official certificate of registration issued directly by the State Trademark Office?
A: When the mark is accepted for registration, an original certificate from STO with English translation by ETO will be provided to the client.
Q: What is the validity term for this registration?
A: The period of validity of a registered trademark shall be ten years, counted from the date of approval of the registration.
Q: Is there any future action that needs to be taken by us to maintain the validity of this registration?
A: We do not have to take any action to maintain the validity of this registration, unless where a registered trademark stands in violation of the provisions of Articles 10, 11 and 12 of the Trademark Law of the People's Republic of China, or the registration of a trademark was acquired by fraud or any other unfair means, the Trademark Office shall cancel the registered trademark in question; and any other organization or individual may request the Trademark Review and Adjudication Board to make an adjudication to cancel such a registered trademark.
OR
Where a registered trademark stands in violation of the provisions of Articles l3, l5, l6 and 3l of the Trademark Law of the People's Republic of China, any other trademark owner concerned or interested party may, within five years from the date of the registration of the trademark, file a request with the Trademark Review and Adjudication Board for adjudication to cancel the registered trademark. Where a well-known mark is registered in bad faith, the genuine owner thereof shall not be restricted by the five-year limitation.
In addition to those cases as provided for in the preceding two paragraphs, any person disputing a registered trademark may, within five years from the date of approval of the trademark registration, apply to the Trademark Review and Adjudication Board for adjudication.
The Trademark Review and Adjudication Board shall, after receipt of the application for adjudication, notify the interested parties and request them to respond with arguments within a specified period.
Q. When is renewal required? What needs to be done to accomplish this?
A. Where the registrant intends to continue to use the registered trademark beyond the expiration of the period of validity, an application for renewal of the registration shall be made within six months before the said expiration. Where no application therefore has been filed within the said period, a grace period of six months may be allowed. If no application has been filed at the expiration of the grace period, the registered trademark shall be cancelled.
Q. Are challenges to this mark possible at any time as in the U.S. ? In the U.S. , this is possible unless an Affidavit of Incontestability is filed after 5 years? Is there any similar procedure in China ?
Any person may, within three months from the date of the publication, file an opposition against the trademark that has, after examination, been preliminarily approved.
If no opposition has been filed after the expiration of the time limit from the publication, the registration shall be approved, a certificate of trademark registration shall be issued and the trademark shall be published.
Please also refer to Chapter V Adjudication of Disputes Concerning Registered Trademarks of the Trademark Law of the People's Republic of China.
