The Chinese Trade Mark Office (“CTMO”) has recently issued new formality requirements (“New Rules”).  The New Rules will take effect from 1 July 2010.  The rules are unclear and the CTMO is meeting with practitioners on Friday, 25 June 2010 to discuss the changes.  A further alert will follow after that meeting.

 

We have prepared this first alert to give you advance warning of the possible changes because of the very short timeframe between when we will get some clarification and the actual implementation of the New Rules.

 

A further alert will follow after that meeting.

 

Background

 

The impetus behind the New Rules is the high instance of fraud being committed on the register. The CTMO has discovered that a number of trade mark agencies have fabricated new applications or withdrawn applications without the authorisation of the trade mark applicant. To combat this, it proposes that all applications must be signed by the applicant itself.

 

There is some uncertainty as to how the New Rules will apply to foreign applicants. We believe the CTMO will be flexible when implementing the New Rules in relation to foreign applicants. Otherwise, it would be practically impossible for foreign applicants to adhere to official deadlines, not to mention the exceedingly heavy administrative burden placed on foreign applicants.

 

We hope these concerns will be resolved in the coming days. Until the CTMO clarifies its position however, we have devised a back-up plan to deal with the worst case scenario.

 

Main changes

 

Applicant’s signature on all application forms: The main impact will be that the applicant’s signature is required on all application forms submitted to the CTMO. This includes application forms relating to trade mark filings, oppositions, cancellations, appeals, recordal of assignments and changes of name. It is uncertain whether the original application forms bearing the applicant’s signature will be required at the time of filing.

 

Certificate of Incorporation: For companies, a copy of the Certificate of Incorporation with seal or signature of the applicant’s authorised signatory must be filed with the application forms. It is uncertain whether the copy of the Certificate of Incorporation must bear an original seal or signature.

 

Identity of name and address: Another change is that the name and address of the applicant in the application forms and powers of attorney must be consistent with that stated in the Certificate of Incorporation. We understand that many companies use a different address for filing trade mark applications to that stated in the Certificate of Incorporation. It is unclear whether a notarised document attesting that the company has two different addresses will be sufficient to fulfill this requirement.

 

Back-up plan

 

We do not believe that the CTMO is likely to accept application forms signed on behalf of the trade mark agency rather than on behalf of the applicant. Therefore, the applicant will either have to sign the documents itself, or grant authority to an individual at Rouse to sign on behalf of the company, rather than as agent, e.g. “John Smith, authorised signatory of Trade Mark Application Company Limited”, rather than “John Smith, authorised signatory of Trade Mark Agency, for and on behalf of Trade Mark Application Company Limited”.

 

This will require considerable trust from the trade mark applicant, particularly as the forms are likely to be in Chinese, but the alternative is to risk missing a deadline, which could have severe consequences.

 

Once the situation is clearer, we will update this Alert.