There are two ways to obtain trademark registration in China. One is to file a national application before the National Intellectual Property Administration, PRC (“CNIPA”) in China directly, and the other one is to file an international registration before WIPO designating into China.
Issues relating to international registrations designating China seem a little bit complicated. I plan to share with some useful information in a series of articles, covering aspects of ex officio examination of marks, goods and services, refusal, opposition, non-use cancellation action, name and address change, change in ownership, and transformation application from international registrations to national applications.
I will first introduce some general information concerning international registrations in this article.
- The competent authority responsible for trademark registration, administration and disputes in mainland China is National Intellectual Property Administration, PRC (“CNIPA”) located at 6 Xituchenglu, Jimen Bridge Haidian district, P.O. Box 8020, 100088 Beijing, China.
- China is a member country with both Madrid Agreement and Madrid Protocol. Designation to Hong Kong, China and Macao, China is not applicable.
- Division of international registrations of a mark is not available in China Trademark Law, therefore, division of international registration has no effect in China.
- Responding to the notifications issued by the CNIPA concerning international registrations is not available before WIPO. It should be addressed to the CNIPA.
- Extension of deadline concerning international registrations is not available in China.
- Chinese trademark agency cannot be recorded as agency for international registrations. Holders must appoint a local representative to respond to any notification issued by the CNIPA. Information about local representatives can be obtained from the CNIPA’s website. Our firm, Kangxin Partners, P.C. (http://en.kangxin.com), providing comprehensive IP services, is glad to assist you. Please feel free to contact me at jane.chen@kangxin.com for any inquires or questions.
- The CNIPA will not issue the trademark certificate for international registrations after grant of protection. The holder needs to file an application to obtain the certified copy of trademark registration certificate before the CNIPA. The certificate will be applied on the basis of one mark in one class.
- There is additional letter “G” before the international registration number in China, in order to differentiate from the national trademark application number. For example, No. G123456 is for the international registration No. 123456. Please remember to add the letter G before the application number when searching the international registration in the CNIPA’s online data base.
- Subsequent designation is available either over all of the goods or services, or over part of goods or services. The duration of validation is from the subsequent designation date to the expiration date of the international registration, shorter than 10 years.
This is part one of a series of articles on the topic of international registrations designating China. More articles will be available soon.
