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Trademark Agencies in China, Their Effectiveness for Trademark Protection Bai Gang Vice President of the Trademark Attorney Subcommittee of CTA, Executive Partner of Wan Hui Da IP Agency
History of the Chinese Trademark Agencies General Introduction • The Trademark Agency System was set up as early as 1990’s, – starting from nothing, – It has in 20 years which is a very short period, reached a relatively well-established level.
History of the Chinese Trademark Agencies • For Chinese applicants, before 1991, – there was No trademark agencies in China – the trademark applications were submitted to the local AIC, who examined the applications and reported them to the higher level of AIC and eventually to the TMO of SAIC. • Foreigners, until 1957 – there was one exclusive trademark agency who served all trademark applicants : CCPIT, a government owned organization. – Since 1985, gradually up to 5 trademark agencies were specially designated as “Foreign-related agencies”, such as CCPIT, CPA, NTD, SPA and China Trademark Agency who only deal with “Foreign-related trademark issues”.
History of the Chinese Trademark Agencies • In May 1990, The SAIC began to promote the Trademark Agency System domestically – after that there were 6 local trademark agencies established for “domestic trademark issue only”. – the trademark agencies remained state owned property until 1999.
History of the Chinese Trademark Agencies • In 1999, the SAIC modified the “Trademark Agency Administration Regulations”, – Private trademark agencies were allowed to start business. – Till August 2000, the total number of trademark agencies has reached 151, among them 61 are still government owned. • According to the “Trademark Agency Administration Regulations”, – A trademark agent (attorney) has to be specially approved after passing the professional exam, and the establishment of the trademark agency has to be examined and approved by the SAIC.
History of the Chinese Trademark Agencies • April 2003, the SAIC cancelled the administrative approval requirements for both the trademark agencies and the trademark attorneys, – which meant that anyone could easily start a trademark agency business without any professional criteria or requirements. – Meanwhile, all the state-owned trademark agencies were ordered to terminate their relationships with the government, and changed to private businesses.
History of the Chinese Trademark Agencies • Today, (Dec. 2009) there are 4700 trademark agencies!
The Main and Basic Effectiveness of Trademark Agency to a Foreign Trademark Owner • Trademark Application: Article 18 of the Trademark Law: “Where a foreigner or a foreign enterprise applies for trademark registration or deals with other trademark matters in China, it shall entrust an organization certified by the Chinese Government as having the qualification for trademark agency to act on its behalf”.
The Main and Basic Effectiveness of Trademark Agency to a Foreign Trademark Owner • Trademark Enforcement: Although there is no specific law/regulations, many local AICs require that a certified trademark agent acts as the representative foreign trademark owners. It is recommended, for better understanding the Chinese relevant laws/practice and better communication purpose, to use experienced trademark attorneys.
The Main and Basic Effectiveness of Trademark Agency to a Foreign Trademark Owner • Overseas applications filed by domestic applicants: Most of the overseas trademark applications filed by domestic applicants are handled by trademark agencies. This overcomes the difficulties for domestic applicants for communication, laws, and procedures.
The Current Situation of the Chinese Trademark Agencies: • Their number is rapidly increasing: 4, 700 in December 2008. • More competition means more choice; • According to the figures of 2008, more than 80% trademark applications were filed through the trademark agencies since the existing of the trademark agencies.
The Current Situation of the Chinese Trademark Agencies: • From 2002 to 2008 – The number of trademark application increased 87%, – while the number of agencies increased 25. 6 times.
The Current Situation of the Chinese Trademark Agencies: • Take strong measures to fight against unfair competition and bad quality: • Low prices caused low quality, fraudulent means, damaged the interest of the applicants. • In Nov, 2008, SAIC and CTA, founded the Subcommittee of Trademark Agency under the China Trademark Association. • In Nov. 2009, SAIC issued the “Trademark Agency Administration Regulations”, to enhance self discipline and supervision among the trademark agencies.
The Current Situation of the Chinese Trademark Agencies: • Current Situation and Trend: • 4700 trademark agencies means a huge variety of businesses – a) a few agents : one or two people, – b) a more solid group: mainly for domestic clients, – c) some with historically strong background, capable of handling foreign related affairs, – d) full range developments on IP, trademark, patent, IP litigation, capable of offering comprehensive consulting services for full range IPR issues; • More and more law firms are trying to step in the trademark (IPR) agents’ work, although still not allowed direct involvement in such matters; • Some trademark agents (IP firms) are also stepping in the litigation field, especially now that the courts are the final appeal authority for trademark registration/dispute.
Wan Hui Da IP Agency/Law Firm, as an example • Established in 1999, acquired the qualification as a trademark agent; • 2001, acquired the qualification of patent agent, • 2004, Wan Hui Da acquired a small law firm by merging, so it can offer the full range IPR services;
Wan Hui Da IP Agency/Law Firm, as an example • Currently Wan Hui Da’s Professional Team: • • • About 200 professionals and supporting staff, including: 22 attorneys-at-law 25 patent attorneys and engineers 40 trademark attorneys 2 foreign of-counsel lawyers 50 in house investigators
Wan Hui Da IP Agency/Law Firm, as an example • Listed in the first tier of recommended firms for IP in China by Legal 500 2009/2010 edition
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