Onerous new requirements slow down trade mark registration process in China

The stricter trade mark filing requirements recently introduced by the China Trademarks Office (CTO) are creating headaches for trade mark owners and their attorneys. These onerous regulatory changes were introduced with the implementation of the new China Trade Mark Law and Regulations on 1 May 2014. The net result of the changes is unavoidable delay in instituting any action before the CTO. Despite widespread complaints, the CTO has so far refused to back down.

Additional documents with original signatures are now required when applying to register, assign, oppose, cancel or take any other action before the CTO. A copy of a signed power of attorney is no longer sufficient.  For the time-being, it is necessary to produce the following documents at the time of filing:  

• An original Power of Attorney signed by an authorised representative of the applicant; 
• A Chinese version of the Application Form signed by the same signatory. As the document is in Chinese, it may cause difficulties for non-Chinese speakers/readers;
• A photocopy of the applicant’s Certificate of Incorporation, or Certificate of Good Standing, bearing the same original signature.

At present, there is some confusion with some trade mark agents interpreting the requirements differently. So far, applications filed under the new laws have not undergone examination for formal requirements, so it remains unknown what the CTO might allow.

For oppositions, the new requirements effectively shorten the opposition period for foreign opponents by about seven days to take account of time spent completing the original forms and their dispatch to China for filing. Original forms must be tendered when filing opposition; they cannot be tendered within the three-month period allowed for filing supplementary evidence.  

To expedite the filing process before the CTO, it is recommended that clients authorise Marks & Clerk Beijing to sign standard form documents on their behalf. We will provide a general power of attorney for this purpose on request.

The Trademarks Appeals Board (TAB) has adopted less stringent requirements. While it does now require a signed Power of Attorney with the original signature, a copy will be accepted at the time of filing so long as the original signed document is submitted within three months. A simple photocopy of the applicant’s Certificate of Incorporation without any signature must also be submitted.