Highlight: The first registered trademarks after the promulgation of the trademark law in 1982 will be in the renewal period soon, and most of such trademarks now are owned by foreign invested companies. In this essay, Bridge IP Law Commentary will give our advice and analysis on the trademark renewal.
The system of trademark application was first carried out in China in 1982 with the promulgation of the Trademark Law, by which the period of validity of a trademark registered in China is ten years from the day of approval and can be renewed, otherwise it will be cancelled. Therefore, most first registered trademarks are coming into the renewal period in 2012 or 2013, and among which the trademarks registered by foreign invested companies occupy a higher proportion due to the weak awareness of the trademark of Chinese enterprises then. For this reason, we would like to remind foreign clients to apply for trademark renewal timely during the renewal period and the grace period. Today, our website will introduce and analyze China’s legal system of trademark renewal.
I. The regulations on the trademark renewal in the current trademark law
In China, the period of validity of a registered trademark is ten years from the day the registration is approved by the National Trademark Office. When the registrant intends to continue to use the trademark after the period, the application for trademark renewal shall be made six months before the expiration, while there still regulates a grace period of 6 months when the registrant fails to make such application within the said period. The renewed period of validity is ten years, which will be administratively approved and publicized.
II. The Procedure of Trademark Renewal
Foreign applicants who want to apply for trademark renewal in China shall entrust a qualified trademark agent in China, and when the renewal is applied for a joint-owned trademark, the applicant shall be the representative in the application.
The documents submitted to the Trademark Office for the renewal include the Application for Trademark Renewal for each trademark, the copy of the business license with seal or stamp, the copy of the Registration Certificate, the Letter of Authorization (if any) and other required materials with their Chinese version. A Renewal Certification will be issued on the approval of the renewal application, and otherwise a Notice of Refusal of Approval will be sent.
III. Legal Consequences and Remedy on the Failure of Trademark Renewal
After the expiration of the trademark, the original owner may face two legal risks if continuing using the trademark while the application for renewal is not made within the said period and the trademark is cancelled for the registration
1. The risk of fraudulent use of the registered trademark. According to the Chinese trademark law, the unregistered trademark can’t be used as the registered trademark, and a fine will be imposed when the cancelled trademark is continued to use under the claim of the registered one.
2. The risk of trademark infringement. To continue to use the trademark that is cancelled and afterwards is registered by other applicants will constitute trademark infringement.
After the cancellation of a trademark, the original owner can apply for a new registration, however, it is more troublesome. According to the current trademark law, if a registered trademark is cancelled or is not renewed, the Trademark Office shall, during one year from the date of the cancellation or removal thereof, approve no application for the registration of a trademark that is identical with or similar to the said trademark. Moreover, it is still necessary for examination by the Trademark Office even if a trademark is applied for registration after the aforesaid one year, and it may also face others’ opposition when it enters into the announcement period after the examination.
At last, although generally the qualified agency will remind the expiration, we still advise clients to check the period of validity on the trademark registration certificate and apply for trademark renewal in time. After all, the make-up afterwards is troublesome, the troubles can be avoided if an application for trademark renewal is made in time.
Author: Ms. Chen Danhong
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.