Alert 366 - China - New Trade Mark Formality Requirements Part 2


As discussed in our Alert 364 the Chinese Trade Mark Office (“CTMO”) recently issued new formality requirements (“New Rules”).  The New Rules took effect from 1 July 2010.  They are unclear.

The CTMO met with practitioners on Friday, 2 July 2010 to discuss their impact on foreign applicants, as the result of lobbying efforts by trade mark agencies.
 
This is the second alert you should have received and as further changes are expected within the next month or two we will continue to keep you updated.

Main Changes for Foreign Applicants

The CTMO has decided that foreign applicants will not be required to sign application forms relating to trade mark applications, oppositions, cancellations, assignments, renewals and recordals.  Instead, foreign applicants will need to submit the following documents at the time of filing:
  • Power of Attorney: An original power of attorney signed by the applicant (sample attached).  A specific power of attorney is required for each application. Notarisation or legalisation is not required;
  • Application Form: An original application form signed by the applicant’s trade mark agent; and
  • Certificate of Incorporation:  A copy of the applicant’s Certificate of Incorporation (a seal/stamp is not required).  The applicant’s name and address should be identical to that on the application form.  We understand that many companies use a different address for filing trade mark applications.  We recommend executing and notarising a document to authenticate the correspondence address.

The Signed Power of Attorney: Additional Options for Foreign Applicants:

A number of you have provided us with an authorisation letter which enables us to sign the power of attorney on the applicant’s behalf.  You may wish to proceed differently given the recent changes.  Foreign applicants can choose one of the following options:
  • Authorisation Letter:  Provide Rouse Consultancy (Shanghai) Ltd. with an authorisation letter to sign the power of attorney on the applicant’s behalf.  Rouse will sign in the capacity of an authorised signatory of the applicant, not as its trade mark agent.  Please ensure that the applicant’s articles of incorporation allow such authority to be granted.  The scope of authority and validity period can be limited; or
  • Signed Power of Attorney: Provide a signed specific power of attorney for each application.  We will need to be in receipt of the original power of attorney before the deadline expires, bearing in mind time zone differences; or
  • Multiple Powers of Attorney: Provide us with multiple signed original powers of attorney omitting the trade mark details.  We will insert the details of each case as and when required.  This solution requires a high level of trust; or
  • Appoint an Officer: Appoint an officer of your company located in China to sign the power of attorney.  Please note that this person must be available to us if there are urgent deadlines to be met.  It would be prudent to authorise more than one person.

We cannot be responsible for not attending to an application or missing a deadline if the original power of attorney does not reach us in time.

You may be interested to know that a number of trade mark agencies are filing photocopies of powers of attorney signed by foreign applicants and not submitting copies of the Certificates of Incorporation (basically maintaining the old practice).  While the CTMO has not refused delivery of the copies, whether or not they will be officially accepted will only be known in around a month’s time. We will update you as the situation becomes clearer.