How to apply for the Registration of Geographical Indications, Certification Marks and Collective Marks

Transcription

1 How to apply for the Registration of Geographical Indications, Certification Marks and Collective Marks Ⅰ. Brief description Certification marks mean signs which are controlled by organizations capable of supervising some goods or services and used by entities or individual persons outside the organization for their goods or services to certify the origin, material, mode of manufacture, quality or other characteristics of the goods or services. Certification marks shall be registered by the organizations capable of supervising and be used by the others outside the organization, the registrant shall not use. It is to certify the origin or characteristics of the goods or services. Parties can use the certification mark as long as the goods or services provided conforms the characteristics and fulfills the registrant s prescriptive procedure, and the registrant shall not refuse the use. Certification marks are commonly used by several parties, so the registration, use and management shall be made public by formulating unified management rules, which could be supervised by all sectors of society and protect the characteristics of the goods or services in order to safeguard the interests of consumers. Collective marks mean signs which are registered in the name of bodies, associations or other organizations to be used by the members thereof in their commercial activities to indicate their membership of the organizations. Collective marks are not registered by individually owned enterprises but the organization constituted with several enterprises. Collective mark could be used on goods and also on services, which are commonly used by members in the organization. The ones who are non-members shall not use it, and it shall not be transferred. To adapt the commonly owned and commonly use of collective mark, its registration, use and management should be made public by formulating unified management rules, which could be supervised by members of the organization. The period of validity for certification marks and collective marks is 10 years, calculating the exclusive right from the approval of registration date. Ⅱ. Filing methods There are two methods for filing certification marks and collective marks: 1. To entrust the recorded trademark agency before Trademark Office to file the application. 2. To file the application directly in trademark registration hall of Trademark Office (The applicant who belongs to Zhongguancun National independent innovation demonstration district could file the application in the trademark representative office located in Zhongguancun national independent innovation demonstration district addressed at Floor 2, administrative office hall, Beijing Administration for Industry & Commerce Haidian subbranch, No. 9 of Daozuomiao, Haidian District, Beijing.) Ⅲ. Filing procedure

2 1. Where applicant entrusts any recorded trademark agency to file the application for certification mark and collective mark, the applicant could choose any recorded trademark agency from the published list of trademark agencies in Trademark Office. 2. Where applicant files the application directly in trademark registration hall of Trademark Office shall follow the below procedures: Preliminary search before filing (optional) Preparation of filing documents Submit the filing documents before the reception window of trademark registration hall Confirm the filing before the code printing window Pay the official fee for trademark registration Receipt of payment of official fee (After the receipt of payment of official fee, the procedure of trademark application is completed. Trademark Office shall post various kinds of documents to the applicant, and the notification of trademark filing receipt shall be issued around 3 months. For the trademark registration examination procedure please refer to the trademark registration flow chart. Applicant could collect the trademark registration certificate in trademark registration hall after receiving the notification of colleting trademark registration certificate.) Ⅳ.Preliminary search before filing (Optional) It takes at least 6 months for certification marks and collective marks from filing to approval of registration. If the application is refused, on the one hand, there would be a loss of the trademark application fee, and on the other hand it needs time to refile the application, and whether the refiling could be approved is unknown. Therefore, it would be better to conduct a preliminary search to check whether prior trademark rights exist before filing. The trademark agencies should be responsible for the search if the application is entrusted by them. (For more details please refer to Preliminary search before filing ) Ⅴ.Preparation of filing documents 1. Filing documents for certification marks 1 Trademark registration application form stamped by the applicant. 2 The qualification certificate of the applicant and its copy, or the valid copy with company chop of the applicant, a detailed description of the condition of professionals and professional testing equipment of the applicant or its entrusted institution, which could indicate the capability of supervising the particular goods quality of the certification mark. 3 The management rules of certification marks use. 4 6 reproduction of the trademark (one pasted in the back of application form, accompanied by five copies), the reproduction of the trademark should be clear, its length or breadth shall not be less than 5 cm each and more than l0 cm. If color is claimed, a color reproduction of the trademark should be pasted in the application form, five copies of the color reproduction of the trademark and one black reproduction shall be attached.

3 5 Where the application is filed directly in the trademark registration hall, the ID card and the copy one of responsible person shall be required (the original ID card will be returned after checking) 6 Where the certification mark is the human portrait, a notarized statement of the permission from the owner of portraiture right shall be required. 2. Filing documents for collective marks 1 Trademark registration application form stamped by the applicant. 2 The qualification certificate of the applicant and its copies, or the valid copies with company chop of the applicant. 3 The management rules of collective marks use 4 List of the collective members 5 6 reproduction of the trademark (one pasted in the back of application form, accompanied by five copies), the reproduction of the trademark should be clear, its length or breadth shall not be less than 5 cm each and more than l0 cm. If color is claimed, a color reproduction of the trademark should be pasted in the application form, five copies of the color reproduction of the trademark and one black reproduction shall be attached. 6 Where the application is filed directly in the trademark registration hall, the ID card and the copy one of responsible person shall be required (the original ID card will be returned after checking) 7 Where the collective mark is the human portrait, a notarized statement of the permission from the owner of portraiture right shall be required. 3. Where geographical indication is registered as a collective mark or certification mark, besides of the trademark registration application form, the qualification certificate of the applicant and its copies, or the valid copies with company chop of the applicant, the management rules of trademark use and reproduction of trademark, the following documents are required: 1 The authorization documents for the registration application, supervision and administration of geographical indications from the people's government or responsible department where the geographical indication is marked. 2 The description determining of particular quality, reputation or some other characteristics of indicated goods for geographical indications and the geographical environment or humanity factors. 3 The evidentiary materials of the objective existence of geographical indications products and evidentiary materials of credibility status (including county annals, agriculture annals, products annals, etc.) stamped by the department issued.

4 4 The relevant documents and materials of the indicated territorial scope distribution of the geographical indications, including the territorial scope indicated in county annals, agriculture annals, products annals or the territorial scope evidentiary documents issued by competent department above province level. 5 Evidentiary materials for the applicant s capability of supervising and testing the geographical indications. Where the applicant is capable for inspection and detection, the list of inspection equipment and inspectors stamped by the applicant shall be required. Where the applicant entrusts the institution that is capable of the qualification of inspection and detection, the original contract between the applicant and inspection agency shall be required. The applicant shall also submit the copy of qualification certificate of inspection agency, the list of inspection equipment and inspectors, stamped by the applicant. 6 Foreigner or foreign enterprise shall provide the legal protection certificate of the geographical indications in its country of origin while filing the application for geographical indications, collective marks and certification marks. Ⅳ. The specific requirements 1 According to article 15 of Implementing Regulations of the Trademark Law, the documents relating to an application for trademark registration shall be typewritten or printed, and the application documents for certification marks or collective marks in handwritten shall be rejected. 2 The applicant s name and company seal shall be identical to the approved or registered name. A separate application shall be filed in respect of each class of goods or service according to the classification of goods and services. If the goods or services are not listed in the classification of goods and services, a description of the said goods or services shall be attached. 3 The trademark type should be marked as certification mark in the application form if it is certification mark, and the trademark type should be marked as collective mark in the application form if it is collective mark. 4 The qualification certificate of the applicant could be the business license or the documents approved by public institution and mass organization. The applicant for collective mark shall be the organization, industrial or commercial organization, association, trade organizations or other collective organizations but not the individual enterprise or self-employed businessmen. 5 The management rules of certification mark use shall contain the below contents: The aim, significance and purpose; the typical characteristics of the goods; the environmental condition of use; the rights, obligation and responsibility of breaking rules and the inspection supervision system for the goods of certification mark. 6 The management rules of collective mark use shall contain the below contents: The name, address, legal representative of the collective members, etc.; the typical characteristics of the goods; the procedure of collective mark use; the rights, obligation and responsibility of breaking rules and the inspection supervision system for the goods of collective mark.

5 7 All the application forms shall be in Chinese. Where the application for certification mark and collective mark is designated in China of territorial extension, the Chinese translation thereof shall be attached. Where the application documents are in a foreign language, Chinese translation shall be attached, subject to the Chinese translation. Ⅵ. Official registration fee One certification mark or collective mark in one class is deemed as one application, no matter how many goods or service items are designated, the official fee is 3000 RMB for each application. Where the application is entrusted by trademark agency, the official fee shall be deducted from the agency s advance payment. Ⅶ. Amendments (Optional procedure) 1. Brief description Where the application is filed directly in trademark registration hall, if the formal requirements are basically fulfilled or the application form filled out basically according to the relevant rules, but amendments are required, the trademark office shall notify the applicant to make the amendments and require him to do so according to the contents prescribed and re-submit it to the trademark office within 30 days from the date on which he receives the notification. In cases of failure to make the amendments or to do so within the time limit, the date of application shall not be maintained. Where the application is filed by entrusted trademark agency, if the formal requirements are basically fulfilled or the application form filled out basically according to the relevant rules, but amendments are required, the trademark office shall notify the trademark agency in written notice. In cases of failure to make the amendments or to do so within the time limit, the application shall be deemed to have been abandoned 2. Notes 1 Applicant could amend or delete the non-standard or unspecific goods or services when amendment is required. The amendment shall be amended to standard name as per the classification of goods and services or the designated contents requested by Trademark Office, however, the expansion of the scope of goods or services shall not be allowed. 2 Where the amendments is for the vague reproduction of trademark, applicant shall only provide the clear trademark specimen as per the previous one, the substantial amendment shall not be allowed. 3 Where the applicant makes the amendment as required in the original application form, the company seal shall be stamped in the blank space or the person who makes the amendment shall sign. Where the application is filed by entrusted trademark agency, the trademark agency s company seal shall be stamped.

6 Ⅷ. Notes 1 The application form shall be in accordance with the information of the applicant s business license. Trademark Office shall deliver the amendment notice, refusal or partial refusal, publication of preliminary approval, notice for collecting trademark registration certificate to the applicant by registered mail after filing registration application. If the actual address doesn t comply with the business license, the change of address for the business license shall be made before filing application. If the address of business license changes after the registration application, the change of address for trademark registration shall be made accordingly. 2 When the formal requirements are fulfilled or the application form filled out according to the relevant rules, Trademark Office shall usually deliver the filing receipt by registered mail in around 3 months. Where the application is filed by entrusted trademark agency, Trademark Office shall deliver the filing receipt to the trademark agency. Filing receipt only indicates the application is received by Trademark Office but not means the approval of application. 3 If the applicant is dissatisfied with a rejection decision for the application of certification mark or collective mark, he may, within 15 days from the date the notification is received, apply to the Trademark Review and Adjudication Board for the review. 4 If the applicant is dissatisfied with opposition decision for certification mark or collective mark, he may, within 15 days from the date the notification is received, apply to the Trademark Review and Adjudication Board for the review. 5 Where the application is filed directly in trademark registration hall, Trademark Office shall deliver the notification for collecting trademark registration certificate as per the name and address shows in the trademark registration application form when certification mark or collective mark is approved for registration. Where the application is filed by entrusted trademark agency, Trademark Office shall deliver trademark registration certificate to the entrusted trademark agency. 6 Certification mark or collective mark shall be used as unregistered trademark from filing before the approval of registration. The use shall not affect the investigation and punishment by the industry and commerce administration authorities if it infringes the other s trademark exclusive rights. 7 The applicant shall file the renewal application for certification mark or collective mark within 6 months before registration expires. The renewal application could made within 6 months from the registration expires if the applicant fails to file the renewal application, but the extension fee shall be paid. The failure of renewal application within the time limit, Trademark Office shall cancel the registration. A refiling shall be made if the applicant still intends to use its mark. Ⅸ.Special announcement 1. The above content is not the formal notification issued by The State Administration for Industry and Commerce or Trademark Office of The State Administration for Industry and Commerce, therefore, all the information is instructional and thereof is not legally binding.

7 2. The above content was revised in March, 2010, and it shall be subject to the requirements of the receptionists when there is any change. Translation supplied to IP Key by HFG - Law Firm & IP Practice IP Key does not take responsibility for any errors in translation