Registering a TM in China is the exclusive prerogative of the Beijing IP Court (BIPC). Subject to the powers bestowed on it by the current legislation, it can either reject or invalidate TMs in the PRC. To file an appeal, a foreign company is required to submit:
- legalized & notarized PoA;
- legalized certificates acknowledging its good reputation.
Until recently, such documents were usually signed by BIPC’s Chairman.
Following the recent changes in BIPC’s nternal rules, an appeal for rejecting or invalidating a TM in China will be dismissed if an applicant fails to furnish properly legalized & notarized evidence. From now on, registering TMs in the PRC requires submitting AoA or other documents demonstrating an applicant’s authority to affix their signature to documents. The new requirements pose a problem for copyright holders & increase the risks of appeals being refused.
What New Obstacles Have Emerged?
Appeals are required to be filed within 90 days from the date copyright holders are notified of invalidation or refusal. Replying to the BIPC’s query & providing the necessary additional evidence can take several weeks; therefore, there’s a strong likelihood that an application won’t be delivered on time. It should be kept in mind that BIPC won’t accept any scanned copies of the above documents.
Sometimes, no documents relating to the chairman’s powers to sign POA on behalf of the entire BOD are available. If that is the case, filing an appeal for registration of a TM in China can be problematic, if not impossible.
Sometimes, the company's AOA may contain provisions granting authority to make use of legal tools; however, those can still be insufficient. Given the fact that Chinese judges have wide discretionary powers, there’s a risk that appeals will be rejected.
Changes in the Work of BIPC
Since there’s been no official announcement of the changes in the work of BIPC, they seem to have resulted from changes in the Court’s internal regulations. Therefore, companies are strongly recommended to make amendments to their AOA or BOD decisions empowering individual BOD members or chairmen to affix their signatures to POA on behalf of the entire BOD. That will make filing TM appeals to BIPC a lot easier & greatly improve companies’ chances of getting a positive decision.
TM registration in the PRC
Should you require assistance with TM registration in China or any other TM-related matters, please do not hesitate to contact IQ Decision UK. Our experts will also be happy to provide professional assistance with registering a business in any province of the PRC.