9 March 2016
A trademark is a sign that enables people to identify the goods or services of an enterprise, distinguishing them from those of other enterprises.
According to the definition provided by the current Trademark Law, a trademark is a sign capable of distinguishing the goods or services of a manufacturer or supplier from those of others.
Since the Trademark Law adopts the “first-to-file” instead of the “first-to-use” principle, in normal circumstances the mere use of a trademark without registration does not form the basis for objecting to others using or registering it. In other words, protection only comes with registration. The use of a trademark that has not yet been registered at the Trademark Office may on the one hand, constitute infringement of the exclusive rights to use the trademark registered by another person. On the other hand, the protection of one’s own rights may be delayed or prejudiced.
The meaning of the “first-to-file” principle is that if different applicants apply for the registration of an identical or similar trademark in relation to identical or similar goods or services, the Trademark Office will confer trademark right on whoever first filed the application. Therefore, the sooner the application is filed, the more likely that the applicant will get protection of their trademark. An application should be filed prior to the actual use of the trademark. At the same time, where the trademark is to be used in many different countries or regions, an application should be filed in all of those countries or regions as soon as possible.
Chinese nationals, Chinese enterprises or other organisations (including Hong Kong residents, Hong Kong enterprises or other organisations) as well as foreign nationals, foreign enterprises or other organisations having, or intending to have, goods manufactured, produced, processed or sold on the Chinese mainland, or services provided on the Chinese mainland may apply for registration of their trademark at China’s Trademark Office.
Generally, the grounds for trademark registration can be classified into absolute grounds and relative grounds. Absolute grounds refer to the inherent non-prohibitiveness and distinctiveness of a trademark, whereas relative grounds mean that a trademark should not be in conflict with the legal rights obtained earlier by other persons. Details are set out below.
The validity period of a registered trademark is 10 years. Where the registrant intends to continue to use the registered trademark after the expiration of the validity period, an application for renewal of the registration should be filed with the Trademark Office within 12 months of the expiration, with another six months grace period if this period cannot be complied with. The period of each renewal is 10 years. The registrant may renew the trademark registration an unlimited number of times. After examination and approval of the renewal application, the Trademark Office will issue the relevant certificate and make a publication. The validity period of a renewed trademark is calculated from the day after the expiration of the previous validity period. If renewal is not completed within the period, the registered trademark will be deregistered.