I was copied the other day on an email from our lead China IP attorney to a potential client. The email was in the form of questions from the client’s attorney to our China attorney and because the questions were good ones and ones we are often asked I thought I would list them below to aid others contemplating a China trademark (after stripping the exchange of any identifiers).
1. Does your China trademark flat fee include all additional responses to obtain final determination where registration is initially refused?
The Chinese Trademark Office (CTMO) does not have a robust system of interaction between applicants and the examiner. In that way it is very different from the United States Patent and Trademark Office and its Office Action procedures. Typically, the only additional responses that might be required in a CTMO proceeding are: (1) modification of the specified goods, if the examiner disagrees with the phrasing; or (2) acceptance of a partial refusal, if the examiner only approves a portion of the application. These responses would be included in the flat fee. However, an appeal of a partial or outright refusal would be a separate proceeding and is not included in the flat fee.
2. Other than an existing prior registration, what applicable standards should we be aware of that might be invoked to deny registration of a mark in China (descriptiveness, genericness, similarity, deceptiveness, etc)?
You have identified the main standards. Among other things, China also prohibits marks deemed detrimental to socialist morals or customs, or that have unhealthy influences.
3. Do the filing fees for one-class registration include all subclasses for each WIPO Nice Classification subdivided under PRC law?
Not necessarily — it depends on the class and on the specified goods. In the PRC a standard trademark application can include up to 10 goods at no additional charge. Some classes have fewer than 10 subclasses; others have more.
4. What is the utility and risk associated with online searches, such as the a PRC English language online Trademark search?
Searching online is useful, but only as a starting point and only if you know what to search for and particularly how to analyze it. Searching for exact matches is only the first step. Also, the publicly available database is anywhere from a few weeks to a few months out of date. And though the user interface has an English page, the results are only in Chinese.
Any more China trademark questions, readers?