The first term of registration of a trade mark in China is 10 years counting from the date of expiry of the three-month opposition period. For a trade mark application subject to opposition, it usually takes a few years for a decision to be rendered by the China Trade Mark Office (CTMO) and a longer period if the decision is subject to review by the Trademark Review and Adjudication Board (TRAB), and further appeal to the court. By the time TRAB or a court issues a decision allowing registration of the trade mark in issue, its first term of registration may have already expired.

On January 20 2009, CTMO issued an important notice dealing with renewals of trade marks that are being opposed at CTMO, TRAB and court. According to the notice, for those trade marks whose first term of registration is due to expire within six months of the end of the registration term, the trade mark owner may file for renewal. There is a grace period of six months after the end of the registration term to do so.

For those trade marks whose first term of registration has already expired, the trade mark owner may apply for renewal within one year of the publication date of the notice (i.e. before January 19 2010).

Upon receiving the renewal application, CTMO will decide whether or not to approve the renewal applications depending on whether CTMO, TRAB or the court accepts or refuses the opposition. If the trade mark is ultimately refused registration, CTMO will not approve the renewal application and the renewal fee may be refunded.

For those trade marks which have already been approved for registration following opposition proceedings but the first term of registration has already expired at the effective date of decision, applications for renewals may be made within one year from the date of the notice, (i.e. before January 19 2010).

Failure to apply for renewal will result in cancellation of registration once the trade mark is allowed registration following opposition, review or court proceedings.

Trade mark owners should therefore be advised to review the first term of registration applicable to their trade marks and file applications for renewal as appropriate to avoid having their trade marks being cancelled by CTMO after having spent years defending the applications.

Florence Lam

Wilkinson & Grist
6/F, Prince's Building, 10 Chater Rd
Central, Hong Kong
Tel: +852 2524 6011
Fax: +852 2520 2090
iprop@wilgrist.com
www.wilgrist.com