From this post you will learn:
China began its economic transformation in 1978. Four years later, on 23/08/1982, the first Trademark Law came into force in China. It is worth noting that the 1982 Trademark Law was one of the reforms introduced to bring Chinese law in line with international standards. And it was this law that introduced the principle of priority in granting trademark protection, known as first-to-file. In Polish we can call this principle first-to-file.
It is interesting to note that in the first Trademark Protection Act of 1982, there was a rule that in the case of two competing applications filed on the same day, priority would be given to the applicant who could prove prior use of the mark. This rule was abolished by an amendment to the law in 1993, and since then only the first-to-file rule has been in force in China.
First-to-file is the priority principle for trademark applications. According to this principle, the local office – in this case, the China Trademark Office (CNIPA) – will grant registration of the trademark in China to the entity (or person) that has obtained the priority of the application resulting from the earlier application for protection and has gone through the entire process. This means that the Office has not finally refused registration and no one has filed an effective opposition (effective means one that would prevent the mark from being registered). There is one more condition. The above applies to a local application, i.e. filed directly in China, which according to Trademark Partners is the most efficient way to obtain trademark protection.
However, filing for trademark protection can also be claimed in the international procedure, which provides for an application to be granted priority over local applications. In other words, it is called an application with priority. What this means?
This means that, in exceptional circumstances, a person seeking protection in China may not be given priority in the processing of their application, even if they were the first to file locally. This can only happen if someone else in the international filing procedure through WIPO successfully applies for protection in China with a claimed priority. Although these cases are rare, they do happen from time to time. This is explained in more super important details below.
A priority application through WIPO allows the owner of a trademark that has been registered in one of member country to extend the protection of that trademark to other countries (including China) while retaining the date of the first application. Member countries are those that have acceded to the Paris Convention or the Madrid Agreement.
In simple terms, it means that if you apply for trademark protection in Poland, and it is your first place of application for protection of a given trademark, you can apply for protection with priority only within 6 months from the date of that first application. Please read below, there is an example.
China is a party to the Paris Convention and the Madrid Agreement. As a result, the China National Intellectual Property Administration (CNIPA) respects the priority in international applications. This means that if someone files a trademark for protection in China through the international system (WIPO) with a granted priority, and another person files the same trademark locally, the international application will take precedence, provided it was filed within 6 months of the first application in a member country of the Paris Convention.
In other words, the international system provides a six-month time window for priority trademark applications, starting from the date of the first application in a member country. If, during this window, anyone (in a member country) files the trademark in a given country, even if they are the first to file in that country, the international application will have higher priority in the review application.
For a better understanding, let’s use an example: Company A files its trademark in Poland on 1 February 2024, which is the first application for this trademark in the world. Then, within 6 months, by 31 July 2024, Company A applies for protection of the mark in China in an international procedure (through WIPO) climing priority from the date of filing in Poland. In this case, Company A’s application will have priority over all local applications filed in China between 1 February 2024 and 31 July 2024. However, if Company B has filed the same mark locally in China before Company A’s filing date in Poland, for example, 31 January 2024, Company B’s application will have priority.
The first-to-file principle does not mean that a trademark is guaranteed to be registered in China, as simply being the first to file does not mean that your application will not encounter obstacles to registration. During the examination of your application, the Trademark Office may find a conflict with other similar trademarks. Your application may also be successfully opposed. Therefore, you should conduct a trademark registrability test before applying for trademark protection.
