China trademark renewal: all things you need to know
Trademark renewal means the trademark owner should file application to extend the validity of the trademark to keep the trademark in live status. Usually this work have to do within 10 years. Maybe the timeline is different in different countries, such as US, UK, India, China, Japan, Canada or Korea, and the process is different too. But the aim is same, that is to help owners to protect their own trademark rights.
As you got the registered trademark in China from CNIPA and used it for many years, it has the timeline or validity time for 10 years. You need renewal it within the 12 months upon it expires.
Usually there are three ways you can renew your trademark. One is that you can renew the mark with the help of your attorney, you need pay additional fees, but it is safe and efficient and one Power of Attorney is needed to prepared.
Another way is that, you or owner can go to the CNIPA trademark office and submit the renewal application papers. The third way is that if owner are fimilar with the CNIPA online service, it is also very easy and efficient.
Renewal steps in China
First, prepare for the documents, it includes the application or owner personal information, such as ID card or passport information. It need clearly show that the trademark owner on certification is same as you ID card or passport. Another important document is the copy file of the original trademark certification which you got years ago. The third one is the translation papers if the owner is one foreigner. Lastly, the power of attorney is a must paper, if the owner plan to finish the renewal process with the help of one law office.
Second, submit the files for trademark renewal application. If you have one attorney done trademark renewal, all papers will be ship to CNIPA trademark office by the attorney by EMS. If you go to the CNIPA local office to submit, prepare all papers ready and sumbit them to the clerk windows.
Third, pay the trademark renewal fees. It cost 1000 RMB for one trademark renewal in China, if the owner miss the grace period- 6 months in China, more 250 RMB will be added.
Trademark renewal grace period
In China, the trademark validity is 10 year upon the registration date of your first file. You need renewal it within 12 month to the deadline time. If you do not renewal it, there is another 6 month for grace period. You can renew it during this 6 month, and additional fees will be added. But if you miss this 6 month, your trademark will be cancelled forever.
Trademark renewal notes
Once the renewal application is accepted by trademark office, one renewal trademark certification will be ship to the owner by EMS, so the address information you filed must be correct. If the renewal meet some problem, one letter will aslo send to you, indicating how to modify it and submit again. If the attorney submit the renewal application, all communicatin will be happened between the attorney and CNIPA trademark office.
Trademark renewal in USA
Once you have obtained a U.S federal trademark registration, you must take certain steps to maintain the registration. Otherwise USPTO will cancel your registration. To maintain your U.S. trademark registration, you must declaration of trademark use.
Declaration of trademark use
Showing use of your mark is done by filing a Declaration of Use. You must file a Declaration of Use no later than the 6th year after it is registered, then again before the 10th year, and then again every 10 years after that. As part of the Declaration of Use, you must file three things with the USPTO. A declaration (a formal, legally binding statement) that lists which items in your registration you are currently selling in the United States. An image showing your trademark as it appears on your products or as used in connection with your services. The required government fee (currently $125 for each class of goods or services).
When you prepare your declaration, you need indicate which goods are protected by your tradeamrk. Anything that you are not currently selling should be deleted. Don’t make the mistake of trying to keep everything in your registration even if you aren’t selling some of the items. If you do, you risk having the entire registration cancelled because you made a false declaration about how you were using it.
Renew your trademark registration in 5 years
In the process of the 5th year renewal, you can search on USPTO website and find the date of registration. The USPTO will not remind you or call you to renew your trademark. You need filling out the section 8, it is one online form, submit it with images, website screenshot and any information needed and last pay fees 100 USD.
If you miss the trademark renewal period between years 5 and 6, you’ll get a grace period of 6 additional months after year 6 to do it. However, you’ll be charged a penalty of $100. If you miss the grace period, your registered trademark will be listed as “dead” on the USPTO database and will have to be re-registered all over again. So, if you’re submitting the form during the grace period, the final fee will be $200 ($100 for the form, and $100 more for the grace period late fee).
Subsequent renew your trademark registration 10 year and afterwards
After the first time declaration of your trademark, you’ll have to fill out a combined Section 8 & 9 Declaration form 10 years, 20 years around. Here, you’ll have to fill out your Section 8 all over again, as well as the Section 9. The fee this time around is $100 for the Section 8 and $400 for the Section 9, totaling $500. You’ll be paying this every ten years. There is also an identical grace period for the combined Section 8 & 9 form. If falls within the six month period after the 10th year, and the penalty will cost $200 (that’s $100 for each form).
As you may have guessed, if you miss the grace period – your registered trademark will become un-registered. In conclusion, if you’re filing the Section 8 & 9 form within the grace period, the final fee will be $700 ($500 for the forms, $200 for the penalty).