As we all know, trademarks are very important for the brands, especially Chinese trademarks. It is often the case that the trademarks of some renowned foreign brands are registered by Chinese companies. For example, the lawsuit of famous brand “Jordan” in China. For foreigners and overseas companies, it is vital to know how to protect their own trademarks and how to register with Chinese trademarks. However, what processes should foreigners and foreign enterprises undertake to apply for trademark registration in China?
Delegate to trademark agency
China’s Trademark Law explicitly stipulates that, foreigners or foreign enterprises seeking to register trademarks in China should entrust a lawful trademark agency to deal with it. BIS reminds that this is a mandatory requirement. Generally, any foreigners or foreign enterprises which are not in China, shall follow this regulation and delegate the process to an professional agency.
At the same time, The Trademark Law also stipulates the principles that foreigners and foreign enterprises should follow when applying for trademark registrations. Mainly the following three situations:
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Follow the international agreement to which China and country of origin participate.
At present, international agreements involving foreigners and foreign enterprises applying for trademark registration mainly include Paris Convention for the 《Paris Convention for the Protection of Industrial Property》and TRIPs《Agreement on Trade-Related Aspects of Intellectual Property Rights》. According to these two international agreements, nationals of member states of these agreements shall be treated with the same principles as Chinese nationals and enjoy the same rights of Chinese nationals when applying for trademark registration in China, including registration process, application formality, registration procedures. Similarly, Chinese nationals enjoy the same rights as nationals of other member states when applying for trademarks in other member states.
Follow the bilateral agreement between China and country of origin.
Foreigners or foreign enterprises from countries which do not belong to the agreements mentioned above should follow bilateral agreement between China and their countries of origin, if any signed, for trademark registration application.
Follow principle of reciprocity
Nationals of countries that neither belong to the two international agreement mentioned above, nor sign trademark protection agreement with China, shall follow principle of reciprocity when applying for trademark registration. In other words, China shall treat other countries in the same way as how other countries treat Chinese nationals and companies on terms of methods, formalities, conditions when applying for trademark registration.
In addition, foreigners or foreign enterprises which delegate trademark registration to agencies, have different requirements in filling documents such as trademark application, power of attorney, etc from Chinese nationals and companies.
Territorial extension required by the Madrid Agreement
The《Madrid Agreement Concerning the International Registration of Trademarks》, referred to as the Madrid Agreement, is a multilateral international agreement by the World Intellectual Property Organization. China became a contracting party to the agreement on 4th Oct 1989. In accordance with Article 1, paragraph 2 of the agreement, nationals of any of the contracting countries can apply for international trademark registration at the International Bureau of Intellectual Property in the Convention establishing the World Intellectual Property Organization, through the Office of the said country of origin, and request for territorial extension, to secure protection and exclusive right.
Among them, foreigners and foreign enterprises seeking to obtain trademark right through Madrid Agreement should be aware of the following rules:
- Foreigners or foreign enterprises requesting for territorial extension must belong to a country which is a member of the Special Union for the International registration of marks.
- As China stipulates, protection acquired by international registration, can only be extended to China when it is applied by the owner of the trademark.
- The categories of goods or services for international registration requesting for territorial extension must be consistent with the registered international trademark goods or services.
- Madrid Agreement only applies to trademarks registered since China coming into force as a party to the agreement. That is only trademarks registered after Oct 4, 1989, can ask for territorial extension in compliance with the regulations.
Apply for registration by yourself
According to article 5 of the 《Regulations on the implementation of the Trademark Law》in China, foreigners and foreign enterprises that must delegate trademark registration to agencies refer to those foreigners and foreign enterprises that do not have residence or office in China. That is, for foreigners and foreign enterprises who have residence addresses or business offices in China, can handle trademark registration by themselves. For example, foreigners who live in China, foreign representative offices in China, Joint ventures companies and foreign-owned enterprises in China.
It seems simple for foreigners and foreign enterprises to register trademarks in China. However, foreigners are not familiar with relevant legal provisions, regulations and judgement. As such , BIS can help with consultation and agency, to ensure successful Trademark registration process.
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