Understanding Trade Mark Registration Proof in China
By Giulia Didonè | Trade Mark Attorney
Trade mark registration in China in comparison to other IP offices isn’t as straightforward as you may think. This becomes particularly obvious when you need to prove ownership of your trade mark registration.
If you’re planning to sell products or services in China, you may need to show proof of trade mark registration in the form of a certification to successfully sell and enforce your brand rights. It’s common for commercial partners to request proof of trade mark ownership in China. Additionally, online platforms like Alibaba and Tmall often require a certificate to sell products through their services.
Whether you applied for a Chinese national trade mark (by filing the application directly in the country) or sought protection under the Madrid System, the required documents to prove that the trade mark has been granted for registration differ.
In fact, there are two different types of certificates of ownership depending on how you filed, as outlined below:
Trade Mark Registration Certificate for Chinese National Marks
The Trade mark Registration Certificate is the official document proving that a trade mark filed nationally, directly with the China National Intellectual Property Administration (CNIPA), has been registered. This certificate is automatically issued by CNIPA once the protection of the trade mark application has been granted. And so, after the trade mark application is preliminarily approved, and no opposition is filed within three months following the publication in the Trade mark Gazette.¹
This certificate contains all the relevant details of the trade mark, including the owner’s information, the list of the goods or services covered by the registration, the validity period. CNIPA has been issuing only Electronic Trade mark Certificates for years now, rather than paper certificates.
Trade Mark Registration Certified Copy for International Registrations Extended to China
Now, if you registered your trade marks in China via the Madrid system, the document that serves as proof of registration is the Certified Copy of a Trade mark Registration Certificate. This document is specifically issued by CNIPA to confirm that the international trade mark has been granted for protection in China.
It is important to note that the Trade mark Registration Certified Copy is not automatically issued by CNIPA upon registration, unlike the Trade mark Registration Certificate for the national trade marks, and it requires a separate application process. To obtain the Certified Copy of a Trade mark Registration Certificate, the trade mark owner must file a specific request with CNIPA.
A common source of confusion among trade mark owners is the misconception that receiving the registration certificate from WIPO or the Statement of Grant of Protection from CNIPA is sufficient to prove trade mark protection in China. However, this is not the case.
The WIPO certificate merely confirms that the trade mark meets international registration requirements and has been recorded in the International Register; while the Statement of Grant of Protection issued by CNIPA only confirms that the international registration has not been refused, but there is still in theory the possibility that CNIPA could issue a refusal if the refusal period is not expired (i.e., 12 months or 18 months as of the date of recording of the international trade mark registration). So, only the Certified Copy of a Trade mark Registration Certificate serves as the official proof of registration in PRC.
The Certified Copy of a Trade mark Registration Certificate is typically issued within 1 to 3 months of filing the request with CNIPA. Therefore, it is advisable for trade mark owners to apply for this document as soon as it becomes possible (when the refusal period of 12/18 months expires).
This certified copy is crucial for enforcing trade mark rights within the PRC (also online), registering the trade mark with Customs, and utilising the trade mark in business operations.
Trade Mark Archive Copy
Years ago, in response to delays in the issuance of the Trade mark Registration Certificates and the Trade mark Registration Certified Copies, CNIPA introduced another document: the Trade mark Archive Copy. This document offers a faster way to prove trade mark registration, it is more like a printed trade mark record that contains all the necessary details of the trade mark and it is stamped with the official CNIPA seal.
This document is available for both Chinese National Trade marks and International Registrations and it can be issued very quickly, often within one week.
While not an official registration certificate, the Trade mark Archive Copy serves as temporary proof of registration until the Trade mark Registration Certificate or Certified Copy of a Trade mark Registration Certificate is issued.
That being said, it is important for owners of international trade marks designating China to understand that a specific document is required to prove that their trade mark has been granted for registration in the country. This document, the Certified Copy of the Trade mark Registration Certificate, must be applied for separately and can take time to obtain.
Acquiring this document as soon as the trade mark is registered in China will help ensure that your trade mark enforcement actions, as well as other business activities requiring it, can be managed efficiently and without unnecessary delays. Failing to secure it in a timely manner can lead to frustrating setbacks.
Summary
To make things easy, we’ve summarised below the three ways in which you can obtain prove ownership of your trade mark registration in China:
- Direct Filing with CNIPA: If you file directly with the China National Intellectual Property Administration (CNIPA), you are automatically granted a Trade mark Registration Certificate once your application is registered.
- Madrid System: If you register your trade marks in China via the Madrid System, you need to request a Certified Copy of a Trade mark Registration Certificate from CNIPA, as it is not automatically provided.
- Both CNIPA and Madrid: If need a quick result and you have filed through the CNIPA or the Madrid System, CNIPA can issue a Trade mark Archive Copy as temporary proof of registration until the official certificates are issued.
If you are interested in learning more or need a certification to prove ownership of your Chinese trade mark, we’re here to help. At XVII Degrees, we are specialist in intellectual property law. If you want to discover how we can help you protect your brand both in Australia and worldwide reach out to us.
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References:
[1] Trade mark Law of the People’s Republic of China, Article 33. (2019). World Intellectual Property Organization. Retrieved from https://www.wipo.int/wipolex/en/legislation/details/19559
