When a sourcing project gets to a certain size, it often makes sense to set up a permanent presence on-the-ground in China to help manage the supply chain. This series of blog posts covers some of the key areas of consideration when it comes to setting up in China.
China is now a party to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). In accordance with the PRC’s obligations for appointment to the WTO, the PRC has revised most of its major laws in relation to intellectual property rights to ensure their consistency with the relevant international treaties and norms, such as the Trademark Law, the Copyright Law and the Patent Law.
Trademark Protection and Registration
Trademarks in China are under the supervision of SAIC’s Trademark Office. Although trademarks may be used in China without registration, the user cannot enjoy the exclusive status granted to registered marks and cannot prevent others from using the mark. In addition, the non-registered user faces a difficult burden of proving “prior use” should another person subsequently apply for registration, and may even face infringement actions after the mark is registered by someone else.
Although the injured party must initiate actions against infringers, a registered trademark will be protected by the Trademark Office and Intellectual Property Courts, while users of an unregistered trademark are limited to seeking protection from the far less effective people’s courts. In China, trademarks are registered for a renewable period of 10 years, and may be assigned or licensed provided such assignments or licenses are registered with and approved by the Trademark Office.
Protection for well-known trademarks is available in China even if not registered, but the extent of the protection is greater for registered marks. China has a trademark dispute regime implemented by the Trademark Office.
An applicant who has filed for registration of a mark in another foreign country may claim a priority date for registration in China according to the agreement signed between that foreign country and China or the international convention to which both the foreign country and China are members or the principle of mutual recognition of priority, provided the applicant’s first filing in the country was within six months of the Chinese filing. The Chinese registration date will be the same as the application date in the other Convention country.
An applicant, who has used a trademark on products shown at any international exhibition held by or permitted by the Chinese government, can claim a priority date for registration in China, provided the application is filed within 6 months from the date the goods were exposed.
Trademark applications involving foreigners must be handled through officially authorized agents, who pass a formal examination and hold a “trademark agent qualification certificate”. Trademark agents provide all services with respect to applications for trademark registration, including legal consulting and advice relating to trademarks.
Written for CSIC by Sophie Mao
China based lawyer at www.AsiaBridgeLaw.com