As we all know, Chinese citizens and enterprises can apply for trademark registration in person, or entrust others to handle it on their behalf, or entrust legally established trademark agencies to handle it. However, how should foreigners and foreign enterprises apply for trademark registration in China?
1. Entrust a trademark agency
China's Trademark Law clearly stipulates that foreigners or foreign enterprises applying for trademark registration in China shall entrust a trademark agency established in accordance with the law. Inschina reminds everyone that this is a mandatory provision. Generally speaking, foreigners or foreign enterprises not in China who apply for trademark registration in China need to entrust an agency to handle the application.
At the same time, the Trademark Law also stipulates the principles that foreigners or foreign enterprises should follow when applying for trademark registration in China. It is mainly composed of the following three situations:
(1) It shall be handled in accordance with the international treaties to which its affiliated countries and China are parties.
At present, international treaties involving foreigners and foreign enterprises in applying for trademark registration mainly include the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Intellectual Property. According to the provisions of these two international treaties, nationals of the member countries of these two conventions can enjoy the same rights as nationals of our country when applying for trademark registration in accordance with the principle of national treatment, and enjoy the same treatment as nationals of our country in terms of registration conditions, application procedures and registration procedures. Similarly, nationals of our country also enjoy the same treatment as nationals of other member countries when applying for trademark registration.
(2) It shall be handled according to the agreement signed between the country to which it belongs and China.
If the country to which a foreigner or foreign enterprise belongs is not a member of the above two international treaties, if the country to which the foreigner or foreign enterprise belongs has signed a bilateral agreement on trademark protection with China, trademark registration may be conducted in accordance with the agreement.
(3) according to the principle of reciprocity.
Neither is it a member of the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, which are two international treaties, nor is it a country that has signed a trademark protection agreement with China. Its citizens or enterprises shall register trademarks in accordance with the principle of reciprocity. That is to say, China will treat the country with the same conditions as the way, procedure and conditions that the country requires Chinese citizens and enterprises to apply for trademark registration.
In addition, foreigners or foreign enterprises that need to entrust a trademark agency to handle trademark registration are also somewhat different from Chinese citizens and enterprises in filling in documents such as trademark application forms and power of attorney.
For example, the power of attorney for trademark registration submitted by foreigners or foreign enterprises shall specify the nationality of the client, and the application for trademark registration shall designate the receiver within China to be responsible for receiving the legal documents issued by the Trademark Office and the Trademark Review and Adjudication Board, etc.
2. Through the Madrid agreement for territorial extension
The madrid agreement concerning the international registration of marks, referred to as the Madrid Agreement, is a multilateral international treaty administered by the World Intellectual Property Organization. China became a party to the Agreement on October 4, 1989. According to the provisions of the second paragraph of Article 1 of the Agreement, nationals of a contracting party may apply for international trademark registration to the International Bureau of Intellectual Property in the Convention establishing the World Intellectual Property Organization through the registration authority of the country of origin, and request territorial extension to obtain the exclusive right and protection right of the trademark in other contracting parties.
Among them, foreigners or foreign enterprises who want to extend their territory to acquire trademark rights through the Madrid Agreement need to pay attention to the following points:
One is to require foreigners or foreign enterprises whose territory is extended to belong to one of the special allies in the international registration of trademarks.
Second, China stipulates that protection obtained through international registration can only be extended to China upon special application by the trademark owner.
Third, the category of goods or services for which the territorial extension of trademark registration application is required should be consistent with the category of registered international trademark goods or services;
Fourth, the "madrid agreement concerning the international registration of marks" is only applicable to trademarks registered since the effective date of China's accession, that is, international trademarks registered after October 4, 1989, in order to claim territorial extension protection in accordance with regulations.
3. Handle trademark registration by oneself
According to Article 5 of China's Regulations on the Implementation of Trademark Law, foreigners or foreign enterprises that must entrust a trademark agency to handle trademark registration matters refer to foreigners or foreign enterprises that do not have regular residence or business offices in China. In other words, foreigners or foreign enterprises that have regular residence or business offices in China can handle trademark registration matters on their own. For example, foreigners residing in China, various foreign institutions in China, Sino-foreign joint ventures, wholly foreign-owned enterprises, etc.
It seems simple for foreigners and foreign enterprises to handle trademark registration in China. However, if foreigners do not know and are not sure about the relevant legal provisions, regulations and judgment standards for trademark registration, a formal, professional and reliable trademark agency, such as Inschina, will conduct consultation or agency to ensure the smooth progress of trademark registration.
Inschina Co. Ltd is the largest business service provider with over 14 years’ experience in China since 2005. We has been specializing in enterprise services, including company set-up, china trademark registration, copyright registration china, patent application process in China, translation services, serviced offices renting, and other kinds of business services. We invite you to find out more information about the individual services offered by Inschina via email@example.com or online LiveChat directly.