"Trademark applications and examinations in the People's Republic of China" is one of the presentations at the China-ASEAN (Association of Southeast Asian Nations) Intellectual Property Workshop. The presentation is divided into three parts: laws and regulations, trademark applications, and trademark examinations.

The Trademark Law states that the Trademark Office, under the State Administration for Industry and Commerce (SAIC), is in charge of trademark registration and administration in China.

This legislation was amended and put into force in 2001. New criteria were introduced, and judicial examinations on administrative trademark registration decisions were established. The Implementing Regulations of the Trademark Law became effective in 2002. The following year, three administrative provisions and measures were issued by the SAIC: Provisions on the Determination and Protection of Well-known Marks, Measures for the Registration and Administration of Collective Marks and Certification Marks, and Measures for the Implementation of International Registration of the Madrid Agreement and its Protocol.

Trademarks are signs that distinguish the goods made by one enterprise from those of other enterprises. Under the Trademark Law, individuals, legal entities, and other organizations can apply for trademark registration. Two or more applicants may jointly apply to register a trademark. Trademarks for goods, collective marks, certification marks, and three-dimensional marks can be registered. Audio marks, scent marks, and defensive marks may not. Under the Trademark Law, geographical indications are registered and protected in China either as certification marks or collective marks.

Any foreigner or foreign enterprise intending to apply for trademark registration in China can file applications in accordance with any agreement concluded between China and the applicant's home country, or according to international treaties to which both countries are parties, or based on the principle of reciprocity.

An applicant who applies for trademark registration must fill in the Chinese forms published by the SAIC in September 2002. Applicants should follow the application procedures.

Application for trademark registration must be typed and submitted to the Trademark Office. One application currently covers only one class of goods or services, but not multiple classes. Any individual, legal entity or other organization intending to acquire exclusive rights to use goods or services trademarks must apply at the Trademark Office. When a foreign applicant files an application, they should entrust a State-approved trademark agent to act as their representative. Applicants should also include a power of attorney with applications.

Trademark registration applicants in China who previously applied to register the same mark in a foreign country are given priority. This is in accordance with any agreement concluded between China and the foreign country concerned, with the international treaty to which both countries are parties, or on the basis of the principle of reciprocity, provided that the application in China is filed within a period of six months from the date on which the application was first filed in the foreign country.

Anyone claiming the right of priority must state it in writing at the time of filing and should submit, within three months, a copy of the original foreign trademark application. Any applicant that fails to make to submit a written claim or a copy of the original application within three months will not be prioritized. Authorities in the foreign country that accepted the first application must certify the copy.

The filing date of a trademark registration application is the date on which the Trademark Office receives it.

China is a member party to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks. China is obliged to use the International Classification of Goods and Services established under the Nice Agreement.

Anyone who applies for registration should file an application based on categories in the published Classification of Goods and Services. The goods or services should be listed in the application, as specified in the Classification. Where any goods or services listed in the application are not included in the Classification, a description of the goods or services should be attached.

Applications are filed in respect of each class of the prescribed classification of goods or services.

When a registered trademark needs to be registered in respect to other goods or services of the same class, a new application for registration is filed.

Five reproductions of a trademark are needed to file the application. However, where colours are designated, five copies of reproductions of the trademark and one copy of the black and white design are required.

Reproductions of a trademark should be clear, either printed on smooth paper or as photographs. The length and width should not be more than ten centimetres, and not less than five centimetres.

Special kinds of trademark applications refer to three-dimensional marks, combination of colours, collective marks and certification marks.

For applications for the registration of three-dimensional signs, the applicant must prepare a statement and provide a reproduction by which the three-dimensional shape can be determined.

Applicants should provide a description of the combination of colours and make a statement in the application.

If applying for a figural representation as a trademark, the applicant should state that the holder of the figural representation agrees. The statement shall be notarized.

If applying for the registration of a collective mark or a certification mark, the applicant should also submit documents detailing its qualification approval to the Trademark Office. A foreign applicant intending to file an application for the registration of a collective mark or certification mark, which consists of a geographical indication, should provide documents certifying that geographical indication in question.

Before a trademark is approved for registration, the applicant may request to withdraw its application. If so, the applicant should file an application for withdrawal.

These are some of the issues relating to trademark registration in China, in the framework of the non-Madrid system.

In 2004, 587,925 applications were filed. Of these, 527,591 were domestic and 60,334 were from foreign sources.

To be continued

(China Daily 10/08/2005 page9)