Basics of China Trademark Law

www.lehmanlaw.com

Presented By: Edward Lehman

Lehman, Lee & Xu

Contents

1. Jurisdictions2. First-to-File Principle3. Sub-Class System4. Multi-Class Filing5. Trademark in Chinese Characters6. Required Documentation7. Timeline8. Renewal9. Post Registration10. Trademark Customs Recordal11. Trademark Rejection

Jurisdictions

People’s Republic of China (Mainland)Hong KongMacaoTaiwan

First-to-File

China is a First-to-File SystemThe first party to file will normally have ownership of a

TrademarkPrior rights or usage is not normally considered

Sub-Class System

Nice Classification System (NCL)Sub-Class System (Chinese characteristics)

Multiple Classes

Multiple Class filings are allowed by China Trademark Office

Simplifies RegistrationDivision of application in the event of rejection

Chinese Trademark

Trademarks should be registered in the original foreign language, and in Chinese

Chinese Consumers respond better to Chinese branded products

The Chinese marketplace will develop its own Chinese name for your product

China law requires products to have a Chinese name and label

Required Documentation

Power of AttorneyIncorporation Certificate/Good Standing CertificateThe full name and detailed address of the applicantElectronic copy of the trademarkSpecification of the goods/servicePriority Certificate: If the applicant claims priority based on

the Paris Convention.

Timeline

The process takes 9-12 monthsWill take longer if there is an office action

Post-Registration

Maintain evidence of useRegister any name or address changes of the registered

trademark holderRegister any licensing of the trademarkCustom Recordal

Renewal

Trademark registration is renewable after expirationNo evidence of use is required

CustomsDocuments and Information RequiredApplication FormsIdentification Card or Incorporation Certificate/Good

Standing CertificateOwnership certificateOther documents as required

RejectionApply for review at Trademark Review and Adjudication

Board (TRAB)Appeal at the Beijing Intellectual Property Court(IP Court)

against the TRAB’s decision, if dissatisfied with the TRAB’s decision

Appeal at the Beijing High Court if dissatisfied with the judgment of IP Court-the judgment of Beijing High Court is final judgment

Under some extreme situations, the final judgment may be reviewed by the Supreme Court

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No.22 Dongfang East Road Chaoyang DistrictBeijing 100600 ChinaTel: (86)(10) 8532-1919Fax: (86)(10) 8532-1999E-mail: mail@lehmanlaw.comWeb site: http://www.lehmanlaw.com