Regarding Chinese trademark before and after registration, we would like you pay attention to the following indications:
1. Before the mark is officially approved of registration, the applicant should not attach any registration symbol (e.g., “®”) to the mark in respect of the designated goods;
2. The subject application or potential registration is valid in Mainland China only. The validity cannot be automatically extended to Hong Kong or Macau, Special Administrative Regions of China. Neither can the validity be extended to Taiwan.
Separate applications should be filed if the applicant wishes to seek protection there.
3. Prior to actual use, a search of the mark in respect of similar or identical goods in the Trademark Register is advisable;
4. It’s helpful to maintain any evidence of using the subject mark, particularly in China (eg., invoice, contracts). In fact the China Trademark Office could require the registrant to submit use evidences ex officio. But normally they will not do so but issue notification of submitting use evidences to the registrant according to the request filed by a third party.
Furthermore the registered trademark to be used must be identical with that on the registration certificate.
Finally after China trademark registration the holder could record its trademark in China Customs, which has some costs for first recording and for further renewals of ten years (local attorney fee and official fee).
There are some examples of fees to recording with Customs:
– for each recordation for each certificate, the costs includes local attorney fee (about USD731), official fee (about USD127) as well as reasonable disbursements. The renewal fee will be (about USD366) if the applicant intends to renew the recordation at the expiration of upmost ten years’ validity.
Regarding the documents for the recording, please kindly see the below.
1. Power of Attorney;
2. Copy of Trademark Registration Certificate which you are going to record with China General Administration of Customs;
3. A copy of the applicant’s Business License (Commercial Register) issued by authority of applicant’s country, which should include the information regarding applicant’s name, address, president of the applicant, main shareholders and shares, registered capital, business scope and business term, etc.;
4. A photo of the trademark in the form of JPG less than 400KB;
5. Photos (at least one) of the products or their packaging bearing the trademark in the form of JPG less than 400KB.
Optional information are as follows:
6. A list of other parties using the IPRs in legitimate way, if possible. The expiration date of the relations had better be indicated.
7. Possibly ports where infringing products are often imported or exported.
By Livia FUMAROLA