Policies and Regulations

Chapter 2 Trademark Application and Registration

Updated: 2010-04-22 15:34

1. Information about Trademark Application and Registration

In 2009. the Trademark Office received 830.500 trademark applications, 18.96 percent more than the previous year, or 64.200 more than the record- making year 2006. This was achieved under the global financial crisis when trademark applications in many countries dropped down. In China. however. as a result of the country ' s economic recovery, the implementation of trademark strategy, improving public consciousness on trademark. increasingly effective protection to trademark. and shorter examination and registration period, the March 30th, WIPO Director General Mr. Francis Gurry visited trademark registration hall accompanied by SAIC Vice Minister Fu Shuangjian and CMTO DG Li Jianchang.

In terms of the Classes as defined in the International Classification of Goods and Services for the Purpose of the Registration of Trademarks. Classes 25. 9. 30. 35 and 11 were among the top ones with the largest number of applications. which were 82.077. 53.919. 50.037. 46.353 and 41.519 respectively. The top five provinces (municipalities) with the largest number of domestic applications were Guangdong Province, Zhejiang Province. Beijing City, Jiangsu Province and Shanghai City, with 132.573. 99.934. 57.801. 49.556 and 41.882 applications respectively, altogether amounting 51.5% of the total domestic applications. Provinces with over 40.000 applications also included Shandong and Fujian provinces. numbering 41,581 and 41.124 respectively. The top ten countries or regions with the largest number of foreign trademark applications (including Madrid trademark applications for territorial extension) were the USA, Japan, Germany, United Kingdom, Italy, Republic of Korea. France. Switzerland. Australia and Singapore, with 19.052. 13.346. 8.392. June 26"', Shi Jianyuan, Head of Discipline Inspection Group of the Disciplinary Commission of CPC to SAIC, visited the trademark registration hall.

5,659, 4,061, 4,122, 3,920,2765, 2,477 and 2,129 applications respectively. Trademark applications from the above ten countries or regions accounted for 74.3% of the total foreign applications in China.

The top five provinces (municipalities) with the largest number of applications for international registrations were Zhejiang, Guangdong, Fujian, Jiangsu and Beijing, whose applications were 2,483, 2,102, 756, 740 and 640 respectively.

In 2009, the Trademark Office accepted 55,804 applications filed for renewal, 39,436for opposition, 96,576 for modification of registered items, 64,517 for trademark transfers, 13,861 for invalidation or cancellation, and 17,447 filing record of trademark license contracts.

In 2009, the Trade Office approved and preliminarily examined 240 geographical indication applications, a big rise compared with 2008.By the end of 2009, the Office had approved 749,800 trademarksof agricultural products, received more than 1,200 geographical indication applications with 48from overseas, 771 approved and preliminarily examined. Among them, the figure in the past two years was 1.56 times of 15years before 2008.

In 2009, the Trademark Office preliminarily publicized 927,935 trademarks in total, approved 837,643 applications for registration, rejected or partially rejected 486,801 applications for trademark registration, processed 106,058 applications for modifications, 66,808 assignments, 58,731 renewals and 68,282 cancellations or invalidations, closed 25,020 trademark opposition cases and processed 17,733 filings of trademark license contracts; examined 46,443 applications for Madrid territorial extension and 23,272 follow-up applications for Madrid trademark international registrations.

2. Breakthrough in Trademark Examination

2-1. Fulfill trademark examination target in 2009

2009 was the crucial year to solve application backlog within 3 years, and also a very busy year. At the beginning of 2009, the Trademark Office made out effective measures to ensure the progress and quality. By the end of June of 2009, 720,000 trademark registration applications had been examined, concluded 10,900 trademark opposition cases, half of the whole year’s target. Till September 15, the Office had examined 1.005 million trademark registration applications, a milestone both in China and world trademark history, earning the Office positive comments both in China and abroad. SAICwas so pleased with the progress that a congratulation letter was sent to the Office and hosted a press conference to release the good news. Mr. Fu Shuangjian, Vice Minister of SAIC gave his congratulation on behalf of SAIC to the Trademark Office at a summery conference held in the Trademark Office; WIPO, International TrademarkAssociation and trademark administrations from EU, USA, Japan, Britain, German and other countries and regions also wrote to Trademark Office for the record. Mass media gave their reports to the big progress in trademark course and its contribution to social and economic development.

September 16th, SAIC held a summarizing meeting on reviewing on the number of trademark examination in 2009 exceeding one Million.

Till the end of November 2009, the Trademark Office had examined 1.3006 million trademark registration applications, closed 22,700 trademark opposition cases, one month earlier to reach the whole year’s targets.

By the end of 2009, the Office had examined 14,147 million trademark registration applications, 114,700 more than the target set for the year, 88.69 percent more than 2008, or equivalent to the total in five years before 2008.Examination period, at the same time, was shortened to 17 months. Meanwhile, 25,000 trademark opposition cases were closed, 3,000 more than the year’s target, 127.6 percent more than 2008.

SAIC top leaders, by highlighting above-mentioned achievements, asked CTMO and Trademark Review and Adjudication Board (TRAB) staff to continue work hard for fulfilling the Three-Five targets, and thus making more contribution to China’s economic construction and world trademark course. Mr. Fu Shuangjian, Vice Minister of SAIC, wrote on CTMO’s report about 2009 trademark examination: the trademark examination in 2009 made a historical record, a warm congratulation to CTMO people! Minister Zhou Bohua of SAIC wrote to CTMO, saying in 2009 CTMO people worked hard and successfully finished the targets both in trademark examination and opposition settlement set for the year, laying a solid foundation to realize the Three-Five targets. He asked CTMO to continue its effort, seriously carried out the principle made by SAICfor 2010, and to make greater contribution to China’s trademark course.

Even though a busyyear, examination quality had also been improved, as 6 causal quality inspections to 15,468 cases showed the qualification rate as high as 98.3 percent.

2-2. Significance of fulfilling 2009 targets

The fulfillment of 2009 targets confirmed the initial arrangement made by SAIC, or clearing application backlog within three years and reaching international level in five years, and the measures suggested by SAIC, relying on the staff of the Trademark Office and Trademark Review and Adjudication Board, winning supports from industrial and commercial administration, trademark agencies, technological means and other resources. SAIC leaders also asked the Office to renew ways of working, adopt new working mechanism and improve working efficiency. The Trademark Office took a series of actions to guarantee reaching the year’s target, such as signing responsibility contract with examiners, hiring additional 300 examining assistants, completing working mechanism and quality management system, improving computer network and adopting other hi-tech means.

The fulfillment of 2009 target not only laid a good foundation for completely clearing application backlog within three years and reaching international level in five years, but also provided good experience for future and gave the Office a professionally mature team and confidence.

The fulfillment of 2 009 target further consolidated China’s position as a world-level trademark big country. By the end of 2009, the Trademark Office had received 7.2225 million trademark registration applications, finished 4.2788 million registrations, 3.4045 million valid registered trademarks, all ranking No. 1 in the world. Both Chinese government and WIPO had ever thought highly of these achievements, while the fulfillment of 2009 target is helpful for China to become a trademark strong country, and for China’s economic progress.

3. Outstanding achievement in Madrid international trademark registration

3-1 Vigorously strengthening Madrid international trademark registration

In the first half of 2009, as a result of international financial crisis, Madrid international trademark registration had dropped down, so how to help Chinese enterprises to go to international market under the crisis with the help of trademark became a prior problem in Madrid trademark international registration. After a careful research of Chinese applicants to Madrid international trademark registration, the Trademark Office presented a plan and obtained high attention and support from SAIC. Minister Zhou Bohua asked the Office to enforce publicity and instruction to Chinese businesses in the field; Vice Minister Fu Shuangjian, after hearing a report from the Office about enforcing publicity and training, indicated that promoting trademark strategy and international trademark registration and protection should be highlighted, active and effective, while the Office should complete relevant mechanism to ensure all efforts.

According to these instructions, the Trademark Office started actions to promote Madrid trademark international registration as follow:

——Adopting a comprehensive publicity campaign. Some 20 articles were published on mass media to introduce relevant knowledge and procedures to apply Madrid international trademark registration, including Opportunities Brought by Madrid trademark international registration and Follow-up Procedures in Trademark International Registration.

——Enriching Madrid Application column at China Trademark website, and appointing specific staff to regularly collect and release international trademark registration information.

——Distributing brochures at various possible meetings and training programs.

——Organizing training programs in Jinan, Wuhan, Wenzhou and Chengdu to introduce knowledge about Madrid trademark international registration.

——Improving working procedures to better service to applicants. After studying application processing procedure, the Trade Office changed the former document submitting to the International Bureau of WIPO every week to everyday.

——Building a database for key enterprises trademark protection so as to better master the development of trademarks protection of Chinese enterprises and thus gather experience and provide on-time service.

Thanks to the support from SAIC and the Trademark Office, China’s trademark international registration made dramatic progress in 2009. In the early of second half of 2009, Chinese applications to Madrid trademark international registration bottomed out, and grew up month by month, and finally 42.6 percent more than that in the first half.

By the end of 2009, China accepted 142,830 applications for Madrid trademark international registration territory extension (one trademark in diverse categories), being No. 1 for five consecutive years among all member states in Madrid Trademark International Registration League. Domestic enterprises and individuals presented 9,721 applications (one trademark in diverse categories) through the Trademark Office, while China’s trademark international registration had been ranked eighth for five consecutive years in the world, and first among developing countries. 3-2. Convening a symposium in memory 20th anniversary of China’s joining in Madrid System In October 2009, Mr. Francis Gurry, General-Director of WIPO and Minister Zhou Bohua wrote each to congratulated 20th anniversary of China joined in Madrid System of Trademark International Registration. Mr. Gurry gave him warm congratulation to SAIC for China’s dramatic progress in the past 20years, and expected to further cooperation with SAIC in trademark field and share their experience. Minister Zhou, after a general summery of China’s experience in the two decades, expressed his gratitude to WIPO for its hard work and effort to complete and empower the Madrid System.

For better summarizing China’s experience in the 20yeas by using Madrid System to protect Chinese trademarks and promoting Chinese enterprises to make full use of the system in international market, SAIC convened a symposium on Oct. 18 2009 in Beijing. On the symposium, congratulation letters from Mr. Gurry and Zhou were publicized to all, and attendants reviewed the trademark history since China joined in the Madrid System in 1989, summarized the experience, and put forward the new measures in carrying out the Outline and Trademark Strategy, enforcing cooperation with Madrid System and overseas protection of Chinese trademarks. Top ten Madrid System registered Chinese enterprises were prized and model units of China AIC system were honored. Representatives from enterprises, ministries and model units as well as trademark agents delivered their speeches.

October 18th, SAIC held the “Symposium of the 20th Anniversary for China Entering Madrid System for Trademark International Registration”.

The symposium was thought as an important measure to carry out the Outline and a symbol of new stage of China’s Madrid international trademark registration, would push China’s international trademark registration and enterprises’ competition in international market forward.