Filing and Prosecution in China Catherine Wolfe Boult

Filing and Prosecution in China Catherine Wolfe Boult Wade Tennant LLP CITMA Paralegal Course

Talk Structure – Why does China matter so much that we having a special talk about China? – Brief history of China – relations with Taiwan, Hong Kong and Macau – Trade Mark Applications and Unique Aspects of Chinese Prosecution – Brief discussion about the Chinese language and the difference between transliteration and translation CITMA Paralegal Course

Introduction to China – Predicted by the Centre for Economics and Business Research, in December 2020, to overtake the USA as the biggest economy in the world by 2028 – Presently (2019 data) the most populous country in the world (1. 4 billion) – By area, the third or fourth largest country in the world – Important market for British business – both manufacturing and sales CITMA Paralegal Course

Introduction to China – Important market for British business – both manufacturing and sales – China is “the world’s factory”, though its service economy is growing fast – Everyone manufactures in China : well, almost everyone - so Chinese Customs checks goods at export as well as import – Trade Mark Registration is critical – and China is a FIRST TO FILE country CITMA Paralegal Course

Talk Structure – Why does China matter so much that we having a special talk about China? – Brief history of China – relations with Taiwan, Hong Kong and Macau – Trade Mark Applications and Unique Aspects of Chinese Prosecution – Brief discussion about the Chinese language and the difference between transliteration and translation CITMA Paralegal Course

Introduction to China CITMA Paralegal Course

Introduction to China : History – A country with a very long history – Peking Man (an early hominid) dated to approx. 700, 000 years ago – First dynasty (traditionally) was the Xia Dynasty, 2100 BC – The last dynasty was the Qing – 1636– 1911 – Hong Kong came under British control in 1842 (-1997) – Macau, under Portuguese control in 1887 (-1999) – China became a republic in 1911. The People’s Republic was founded in 1949 after WWII and then civil war CITMA Paralegal Course

Introduction to China : History CITMA Paralegal Course

Introduction to China : Geography – We say “China” as shorthand for the People’s Republic of China. Chairman Mao declared the foundation of the People’s Republic of China on 1 October 1949 (after WWII, and after the following civil war between the Communists and the Nationalists (KMT)) – NOT TO BE CONFUSED with – The Republic of China on Taiwan (pop. 24 million) – Also known as Taiwan, R. O. C. – When the Communists won the civil war in 1949, Chiang Kai-shek and the KMT retreated to Taiwan. CITMA Paralegal Course

Introduction to China : Geography – Please do not confuse “China” = the People’s Republic of China – with – Taiwan, R. O. C. – It is not possible to have diplomatic relations with both countries at the same time. CITMA Paralegal Course

Introduction to China : Geography CITMA Paralegal Course

Introduction to China : Geography – Hong Kong is now part of the People’s Republic of China. It is called Hong Kong Special Administrative Region. However it still has its own laws and its own Trade Mark Register. – Macau is now part of the People’s Republic of China. It is called Macau Special Administrative Region. However it still has its own laws and its own Trade Mark Register. CITMA Paralegal Course

Introduction to China : Geography – The People’s Republic of China is a founder signatory to the Madrid Protocol (1996). – Hong Kong is not a member because it is not a separate territory, it is a SAR. – Macau is not a member because it is not a separate territory, it is a SAR. – Taiwan, R. O. C. is not a member – because China is a member. CITMA Paralegal Course

Intellectual Property and the PRC – China has a long history … but the PRC began on 1 October 1949. It is a one-party state led by the Chinese Communist Party and so for a long time it did not have any Intellectual Property law – First Trade Mark Law in 1982 (revised 1993, 2001, 2013, fourth revision is in preparation) – Joined Paris Convention and the PCT in 1985, Madrid Protocol in 1996 – Joined WTO and TRIPS in 2001 CITMA Paralegal Course

Talk Structure – Why does China matter so much that we having a special talk about China? – Brief history of China – relations with Taiwan, Hong Kong and Macau – Trade Mark Applications and Unique Aspects of Chinese Prosecution – Brief discussion about the Chinese language and the difference between transliteration and translation CITMA Paralegal Course

Intellectual Property and the PRC – Trade Marks in China are very cheap to file. Over seven million applications were filed in 2018, and a similar number in 2019. – The official fee for an application in one Class covers a specification of ten items; and then each additional item costs extra. – China uses the Nice Classification system … – AND its own unique sub-class system – Best to use their own tick-box to choose your terms CITMA Paralegal Course

Intellectual Property and the PRC – China uses the Nice Classification system … – AND its own unique sub-class system – Best to use their own tick-box to choose your terms. – An extra step: find out what the client does, find out how to describe this for UK/EU purposes, then find out how best to describe this under the Chinese system – BEFORE YOU FILE. – The Nice Classification Class Headings do not cover all goods of the Class, in China (or in the UK or EU). CITMA Paralegal Course

Intellectual Property and the PRC – Take local advice before you file to avoid surprises. – If you are filing directly in China, you need to have representation by a state-approved agency if you are not a Chinese applicant, and the agency will need a scan of a signed Power of Attorney in order to act, so you have an opportunity to discuss this. – If you are securing protection via the Madrid Protocol, then discuss with a Chinese attorney before you file your base application. (You are likely to be needing them later anyway!) CITMA Paralegal Course

Intellectual Property and the PRC – China does not have retail services, but you can file in Class 35 for related wording as a kind of work-around. – Also, file for the goods which are retailed. CITMA Paralegal Course

Intellectual Property and the PRC – If you file an application in China which has a priority claim, eg from the UK, the Chinese filing has to match it, at the filing point. – There might then be a “deficiency notice” with a very short response date, to transform the wording into locally recognized terms, or delete. This is NOT a conversation but if the Examiner has made a provable mistake then you can point that out CITMA Paralegal Course

Intellectual Property and the PRC – If you file an application in China through the Madrid Protocol, the Chinese designation’s specification might not be what you think! – Take local advice before you file at WIPO. Take local advice even before you file the first base application (eg in the UK). CITMA Paralegal Course

Intellectual Property and the PRC – Certification marks are possible in China. – Collective marks are possible in China. – Series marks are not possible in China. – Multi-Class is possible but NOT recommended – because a problem in one Class will hold up all the others, and the per. Class fees are the same as for single-Class filing. CITMA Paralegal Course

Intellectual Property and the PRC – China has inherent examination and ex officio prior rights examination. – With 7, 000 applications filed in 2018, and a similar number in 2019, you can expect to meet prior rights objections! – Apply to revoke prior rights (three-year term, not five), or invalidate them, buy them, or argue against them, or narrow your own specification to escape them. – Appeal to the TRAB may be the only way to keep the application pending, whilst you deal with the citations, because suspension not possible CITMA Paralegal Course

Intellectual Property and the PRC – After acceptance: publication in the Gazette for a threemonth opposition term, then registration. – Renewal in ten years – from the REGISTRATION date, not the application date. – Vulnerable to non-use after THREE years, not FIVE. – Can register the registration certificate with Customs. Need to order a special document if you secured Chinese protection via the Madrid Protocol. CITMA Paralegal Course

Talk Structure – Why does China matter so much that we having a special talk about China? – Brief history of China – relations with Taiwan, Hong Kong and Macau – Trade Mark Applications and Unique Aspects of Chinese Prosecution – Brief discussion about the Chinese language and the difference between transliteration and translation CITMA Paralegal Course

Introduction to China : Language – China does not use the alphabet we use for English. Instead it uses characters. – Chinese characters are very useful because speakers of Mandarin (North China) and Cantonese (South China, Hong Kong) can use the same script even though they sound the characters out differently. – Since 1 October 1949, the PRC has used “simplified characters”. Taiwan still uses “complex characters”. Many are the same (a bit like American/British spellings). CITMA Paralegal Course

Introduction to China : Language CITMA Paralegal Course

Introduction to China : Language – This very popular surname TRANSLITERATES as Wang, or sometimes Wong. – It means “King”. – Wouldn’t normally translate a name. (Herr Schwarz, Madame Blanche, Dr Wolfe) CITMA Paralegal Course

Introduction to China : Language – TRANSLITERATION : writing out how it sounds (Wang) – TRANSLATION : writing out what it means (King). – Never need to transliterate French, German, Italian into English - because we all use the same script. – Chinese, Japanese, Korean etc may require transliteration or translation or both. CITMA Paralegal Course

Introduction to China : Language – Anyone trading in China, or visiting China, will be given a Chinese name. There are conversion tables to facilitate this. – Local attorneys can help with this. Care needed if the Applicant name contains the mark – you want them to match! – A Power of Attorney is needed at the filing point, which is a good opportunity to have this discussion with the client CITMA Paralegal Course

Introduction to China : Language CITMA Paralegal Course

Thank you for listening and GOOD LUCK CITMA Paralegal Course