On 28 June 2019, the China National Intellectual Property Administration (CNIPA) released a lowering of fees notice in relation to Chinese trade marks and patents as part of the Chinese government’s plan for continued economic development and social welfare. These fee adjustments have been effective as of 1 July 2019, and this article exclusively covers trade marks.
In China, a successfully registered trade mark is valid for a period of 10 years from the date of registration. To extend the period of validity for a further 10 years, an application for renewal is to be filed within 12 months prior to its expiration date. There is a 6-month grace period after the expiration date.
Pursuant to the recent notice effective as of 1 July 2019, the official fees for filing a renewal application (per mark per class) have been halved, from around USD144 (RMB 1,000) to USD72 (RMB500). A further 10% discount is available where the registrant files the renewal application via the CNIPA’s electronic filing system and agrees to accept an electronic, in place of a physical, renewal certificate.
Recordal of Change
The fees for recording change of applicant’s/registrant’s name or address (per mark per class) have been reduced from around USD36 (RMB250) to USD22 (RMB150). Where the applicant opts to record such changes via the CNIPA’s electronic filing system and agrees to accept an electronic certificate of recordal in place of a physical one, the fees for recordal of change of name/address is waived.
Special Discount for cases filed online
For many other trade mark cases that are filed via the CNIPA’s electronic filing system, a discount of 10% off the official fees are provided and the related certificate (other than a registration certificate) will be issued in electronic form. These cases include, but are not limited to, the application for registration of trade marks, re-issuance of trade mark certificates, assignment, renewal, late-filing for renewal, obtaining certified copy of trade mark certificate, and recordal of trade mark license. At the present stage, opposition, cancellation and review cases are not yet available for online submission.
Viewed macroscopically, the reduction of renewal fees is particularly significant. Considerable renewal costs are saved, as registrants typically own at least several trade marks for protection of a comprehensive range of goods and services. Coupled with the breadth of reduction spanning various other trade mark procedures, the overall expenditure for proprietors on trade mark official fees are significantly reduced.
It is worth noting that the CNIPA is developing their electronic filing system and encouraging trade mark applicants/registrants to deal with trade mark cases online. We believe more trade mark cases, such as opposition, cancellation and review cases, etc. will be available for online submission in the future. The electronic system facilitates time/cost savings for all parties including trade mark owners and agents, as well as the CNIPA.
To conclude, these welcomed new changes represent a continuous effort by the Chinese government in recent years to enhance intellectual property protection for trade mark owners.
This article was written by May Chan and Vicky He.