How to claim Priority for Trademark in China: E-Copy vs Paper Copy

In the present article we tackle the issue of claiming priority for a trademark filing in China, shadowing some light on the debated issue of the certificate of priority (original paper vs electronic). Before talking about the actual dilemma, let us explain what is the Priority Right in the trademark field.

The priority right in the trademarks constitutes a fundamental mechanism in the international trademark registration system, designed to safeguard applicants' priority status across multiple jurisdictions. Can you imagine that the right of priority was firstly introduced in the Paris Convention in 1883?

This legal construct enables applicants who have filed a trademark application in one member State to subsequently file applications for the identical mark in other member states within a prescribed period (6 months), while maintaining the benefit of the original filing date.

As said above, the basis of trademark priority comes from the Paris Convention (1883), which provides an important framework for the international protection of intellectual property rights. Article 4 of the Paris Convention stipulates that an applicant can claim priority in other member States within six months after the first application for trademark registration and enjoy a priority filing date.

Main types of trademark priority

Convention Priority

As mentioned above, applicants can claim priority in other member states within six months after the first application to ensure that the application date in these countries is the same as the first application.

Exhibition Priority

According to Article 25 of the Trademark Law, if a trademark is first used for goods displayed in an international exhibition, the applicant can enjoy priority within six months from the date of the exhibition. This provision applies to international exhibitions hosted or recognized by the Chinese government and is intended to encourage innovation and opportunities to showcase new products.

How to apply a trademark by claiming priority in China?

Before the introduction of CNIPA online filing, applicant was required to submit their registration application either together with, or within three months of, the original authentic copy of the priority documents. The original of such document was/is required.

Following the introduction of online filing system, applicants are permitted to submit an electronic copy of the priority documents together with the registration application. In such cases, the CNIPA deems applicant to fulfil the requirement and no need to submit the original authentic copy of the priority certificate.

An additional point deserves consideration in this context. In the event that priority document is submitted electronically, the CNIPA examiner reserves the right to challenge the priority document during subsequent examination and request the applicant to submit the original, authentic copies of the priority certificate. 

This is an extremely uncommon occurrence, but it is a possibility. It is therefore recommended to keep the original, authentic copies of the priority documents for a period of 3-5 months.

In the event that an electronic copy of the priority document is not available at the time of submitting the trademark application, the applicant can only claim priority by entering the priority information in the request form and supplementing it with the original authentic copy of the priority documents within the next three months.

This is surprising and puts professionals in an uncomfortable position. Yes: the priority certificate filed within 3 months after the trademark application is filed, shall be filed in original authentic format.

According to the Article 5 of Chapter 2 of the "Trademark Examination and Trial Guidelines" the priority certificate should be submitted as an original document along with the corresponding translation.

However, many countries are moving toward issuing priority documents exclusively in electronic format rather than on paper. This trend is particularly evident in the European Union Intellectual Property Office (EUIPO), which has embraced electronic submission for efficiency and environmental reasons.

Although there is no specific official documentation from CNIPA confirming that electronic printouts are acceptable in lieu of physical originals, in practice, such printouts have been increasingly accepted, not only if the priority e-document is filed at the time of trademark filing but also if filed within 3 months deadline for supplements. We believe this happen because it is notorious that EUIPO does not issue anymore authentic priority documents, and it has made available on its website a system for verification of the authenticity of certificates.

From a cost and time perspective, if the priority period is not urgent and the copy of the priority documents has not been obtained when submitting the application, it is recommended that the applicant submits the application after obtaining the copy of the priority documents. 

On the contrary, if the priority period is urgent, the application can only be submitted first, and the original authentic copy of the priority documents needs to be supplemented within 3 months.

Conclusion

Trademark priority is a critical tool for securing early filing dates and protecting brand interests globally. Understanding the types of priority, the relevant legal provisions, and the required timelines for document submission is essential for applicants aiming to make full use of these rights.

Legal basis

Article 4 of the Paris Convention

The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.

If an applicant applies for trademark registration for the first time abroad, he or she may file a trademark registration application with the State Intellectual Property Office of China within six months and claim priority. This means that the application date of the trademark in China will be deemed to be the same as the date of the first application.

The applicant requesting for the right of priority in accordance with the preceding paragraph shall file a written declaration when filing the application for trademark registration, and shall submit the name of the exhibition in which its commodities are displayed, the evidence proving that the said trademark is used on the displayed commodities, the date of exhibition and other certification documents; those failing to file the written declaration or those failing to submit the certificate documents with the prescribed time limit shall be regarded as having not requested for the right of priority.

The matters reported and the materials provided for the application for trademark registration shall be authentic, accurate and complete.

In accordance with the provisions of Article 25 of the Trademark Law, when requesting priority, the applicant shall submit a copy of the first trademark registration application, which must be certified by the trademark authority that accepted the application and should clearly state the application date and application number.