TRADEMARKS IN CHINA

July 14, 2005
Harakenzo World Patent & Trademark
Trademark/Design Dept. Jin Man Tang

The Trademark Law of the People’s Republic of China was adopted in August, 1982 and was entered into force in March, 1983. The Trademark System in China has been established through the First Amendment of the Trademark Law and the Implementation Regulations in 1993, and the Second Amendment of the Trademark Law and the Implementation Regulations in 2001.

1. Basis of the Trademark System in China
(1) International treaties in connection with trademarks that the People’s Republic of China has acceded, including the Paris Convention, and the Madrid Protocol.

(2) Laws instituted by the National People’s Congress and the National People’s Congress Standing Committee, including the "Trademark Law" and the "Law against Unfair Competition".

(3) Administrative regulations instituted by the State Council, including the "Trademark Law Implementing Regulations" and the "Ordinance by the Customs for protection of intellectual property"

(4) Department memorandum instituted by the State Administration for Industry and Commerce, including the "Trademark Trial Regulations", the "Regulations for Recognition and Protection of Well-Known Trademarks", the "Opinions of the State Administration for Industry and Commerce Concerning Matters in Administrative Enforcement of the Trademark Law", and the "Opinions Concerning Solving Matters in Trademarks and Names of Corporations".

(5) Judicial interpretations instituted by the Supreme People’s Court, including the "Interpretation by the Supreme People’s Court Concerning Matters in Application of Laws in Trials of Trademark Suits", the "Interpretation by the Supreme People’s Court Concerning Matters in Application of Laws to Stopping Infringement of Exclusive Right to Use a Registered Trademark and Preservation of Evidence Prior to Litigation", and the "Interpretation by the Supreme People’s Court Concerning Matters in Trials of Trademark Suits and the Scope to which the Laws May Be Applicable".

2. Definition of Registered Trademark
Registered trademark mean trademarks that have been approved and registered by the Trademark Office, including trademarks, service marks, collective marks and certification marks.

3. Constitution of Registered Trademark
Registered trademarks must be visual signs including any words, designs, letters of alphabets, numerals, three-dimensional symbols, combinations of colors, and their combination. New types of trademarks such as an odor trademark or an audio trademark shall not be registered in China.

4. Registration of trademarks is optional
It is within free discretion of the natural person, legal entity or other organization whether it or he applies for a registration of the trademark for the goods produced, manufactured, processed, selected or marketed by it or him.
However, trademark registration in China is not completely optional. The Section 6 of the existing Trademark Law regulates that "as for any of such goods, as prescribed by the State, that must bear a registered trademark, a trademark registration must be applied for. Where no trademark registration has been granted, such goods cannot be marketed." With regard to some goods (drugs for human being and tobacco products only), registration of the trademark is compulsory.

5. First-to-file rule for registration of trademark
Where two or more applicants apply for the registration of identical or similar trademarks for the same or similar goods, the preliminary approval, after examination, and the publication shall be made for the trademark which was first filed.
Where applications are filed on the same day, the preliminary approval, after examination, and the publication shall be made for the trademark which was the earliest used, and the applications of the others shall be refused. First-to-file principle is employed.

6. Signs that shall not be used as trademarks
(1) Those identical with or similar to the State name, national flag, national emblem, military flag, or decorations, of the People’s Republic of China, with names of the places where the Central and State organs are located, or with the names and designs of landmark buildings.

(2) Those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries (except that the foreign state government agrees otherwise on the use).

(3) Those identical with or similar to the names, flags or emblems or names, of international intergovernmental organizations (except that the organizations agree otherwise on the use or that it is not easy for the use to mislead the public).

(4) Those identical with or similar to official signs and hallmarks, showing official control or warranty by them (except that the use thereof is otherwise authorized).

(5) Those identical with or similar to the symbols, or names, of the Red Cross or the Red Crescent.

(6) Those having the nature of discrimination against any nationality.

(7) Those having the nature of exaggeration and fraud in advertising goods.

(8) Those detrimental to socialist morals or customs, or having other unhealthy influences.

(9) The geographical names as the administrative divisions at or above the country level and the foreign geographical names well known to the public shall not be used as trademarks (except that such geographical terms as have otherwise meanings or are a part of collective marks/or a certification marks. Where a trademark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid).

7. Signs that shall not be registered as Trademarks
(1) Those only comprising generic names, designs or models of the goods in respect of which the trademarks are used.

(2) Those having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademarks are used.

(3) Those lacking distinctive features.

(4) Where an application is filed for registration of a three-dimensional sign as a trademark, any shape derived from the goods itself, required for obtaining the technical effect, or giving the goods substantive value.

(5) Where a trademark in respect of which the application for registration is filled for use for identical or similar goods is a reproduction, imitation or translation of another person’s trademark not registered in China and likely to cause confusion, it shall be rejected for registration and prohibited from use.

(6) Where a trademark in respect of which the application for registration is filed for use for non-identical or dissimilar goods is a reproduction, imitation or translation of the well-known mark of another person that has been registered in China, misleads the public and is likely to create prejudice to the interests of the well-known mark registrant.

(7) Where any agent or representative registers, in its or his own name, the trademark of a person for whom it or he acts as the agent or representative without authorization therefrom, and the latter raises opposition.

(8) Where the trademark contains a geographic indication, the goods is not from the region indicated therein and it misleads the public.

8. From New Application for Trademark Registration to Registration
(1) Documents required for application for trademark registration:
(i) Application
(a) Principle of one trademark, one application, one category
(b) Comprehensive indication of designated goods/services shall not be accepted. Where no exemplification is made in the "Classification of similar goods/services", description on new designated goods/services shall be made.
(c) Where the number of designated goods/services exceeds 10, a surcharge of registration fee per excess goods/service shall be additionally paid.
(ii) Mark Drawing
(a) When filing an application for a registration of a three-dimensional sign as a trademark, the applicant must submit a mark drawing from which the three-dimensional shape of the sign can be determined.
(b) When filing an application for a registration of a sign consisting of a combination of colors, the applicant must submit a description thereof in writing.
(c) When filing an application for a registration of a sign consisting of or including foreign language, the applicant must submit a description of the meaning thereof.
(iii) Identification paper of the applicant
(iv) Power of attorney

(2) Priority Claim
(i) Any applicant for the registration of a trademark who files an application for registration of the same trademark for identical goods in China within six months from the date of filing the first application for the trademark registration overseas may enjoy the right of priority in accordance with any agreement concluded between the People’s Republic of China and the country to which the applicant belongs, or according to the international treaty to which both countries are parties, or on the basis of the principle whereby each acknowledges the right of priority of the other.
Where a trademark is first used for goods in an international exhibition on sponsored or recognized by the Chinese Government, the applicant for the registration of the trademark may enjoy the right of priority within six months from the date of exhibition of the goods.
(ii) Anyone claiming the right of priority according to the preceding paragraph shall make a claim in wiring when it or he files the application for the registration of the trademark, and submit, within three months, documents showing the title of the exhibition in which its or his goods was displayed, proof that the trademark was used for the goods exhibited, and the date of exhibition; where the claim is not made in wiring, or the proof documents not submitted within the time limit, the claim shall be deemed not to have been made for the right of priority.

(3) Filing date: the date on which the Patent Office is in receipt of application documents (principle of delivery).

(4) Opposition to Registered Trademark
(i) Where a trademark the registration of which has been applied for is in conformity with the relevant provisions of this Law, the Trademark Office shall, after examination, preliminarily approve the trademark and publish it.
(ii) Any person may, within three months from the date of the publication, file an opposition against the trademark that has, after examination, been preliminarily approved.
(iii) Where an opposition is filed against the trademark that has, after examination, been preliminarily approved and published, the Trademark Office shall hear both the opponent and applicant state facts and grounds, and shall, after investigation and verification, make a decision.
(iv) Where any party is dissatisfied, it or he may within fifteen days from receipt of the notification, apply for a reexamination, and the Trademark Review and Adjudication Board shall make a decision and notify both the opponent and applicant in writing.
(v) Any interested party who is not satisfied with the decision made by the Trademark Review and Adjudication Board within thirty days from the date of receipt of the notice, may institute legal proceedings in the People’s Court.

(5) Grant of exclusive right to use the registered trademark:
(i) If no opposition has been filed within three months from the date of the publication against the application for the trademark, the Trademark Office shall approve the registration, issue a certificate of trademark registration to the applicant, and publish it accordingly.
(ii) Where the opposition cannot be established upon adjudication, the registration shall be approved, a certificate of trademark registration shall be issued, and the trademark shall be published.

9. Term of registered trademark:
The term of a registered trademark shall be ten years from the date of registration of its establishment.

10. Renewal of registered trademark
(1) Where the period of validity of a registered trademark is expired and the registrant needs to continuously use the registered trademark, an application for renewal of the registration shall be made within six months before the expiration. Where no application therefore has been filed within the period, a grace period of six months may be allowed.

(2) Any renewal of registration shall be published after it has been approved.

11. Transfer of registered trademark
(1) Where a registered trademark is assigned, the assignor and the assignee shall conclude a contract for the assignment, jointly file an application with the Trademark Office, and submit an "application for assignment of registered trademark".

(2) The assignee shall proceed application for assignment of registered trademark.

(3) Where a registered trademark is assigned, identical or similar trademarks registered for identical or similar goods shall be assigned together.

(4) Application for assignment of registered trademark that may cause mislead, confusion or any other negative effect shall not be approved.

(5) The assignment of a registered trademark shall be published after it has been examined and been approved, and the assignee enjoys the exclusive right to use the registered trademark from the date of publication.

12. Licensing of registered trademark
(1) Any trademark registrant may, by signing a trademark license contract, authorize other person to use his registered trademark.

(2) The trademark license contract shall be submitted to the Trademark Office for record.

(3) The licensor shall supervise the quality of the goods in respect of which the licensee uses his registered trademark, and the licensee shall guarantee the quality of the goods in respect of which the registered Trademark is used.

(4) The licensee shall indicate the name of the licensee and the origin of the goods on the goods that bear the registered trademark.

13. Adjudication to cancel registered trademark
(1) Where a registered trademark stands in violation of the provisions of Articles 10, 11, and 12, or the registration of a trademark was acquired by fraud or any other unfair means, an organization or individual may request the Trademark Review and Adjudication Board to make an adjudication to cancel such a registered trademark.

(2) Where a registered trademark stands in violation of the provisions of Articles 13, 15, 16, and 31, the trademark owner or interested party may, within five years from the date of the registration of the trademark, file a request with the Trademark Review and Adjudication Board for adjudication to cancel the registered trademark. However, where a trademark is registered in bad faith, the owner of the well-known trademark shall not be restricted by the five-year limitation.

14. Cancellation of registration of trademark not being used for three years
(1) The Trademark Office may cancel a registered trademark that has not been continuously used for three years.

(2) With respect to a registered trademark that has not been continuously used for three years, any person may report the fact to the Trademark Office and demand for cancellation of registration of the registered trademark.

15. Establishment of a well-known mark
(1) accreditation organization: the Trademark Office, the Trademark Review and Adjudication Board, and the court

(2) Factors that shall take account of in the establishment:
(A) Reputation of the mark to the relevant public;
(B) Time for continued use of the mark
(C) Consecutive time, extent and geographical area of advertisement of the mark;
(D) Records of protection of the mark as a well-known mark; and
(E) Any other factors relevant to the reputation of the mark

16. Remedy for exclusive right to use registered trademark
(1) When an exclusive right to use a registered trademark is violated, the trademark registrant or interested party may institute legal proceedings in the court or request the administrative authority for industry and commerce for actions.

(2) Where it is established that the infringing act is constituted in its handling the matter, the administrative authority for industry and commerce handling the matter shall order the infringer to immediately stop the infringing act, and, upon the request of the interested party, medicate on the amount of compensation for the infringement.

(3) Where a trademark registrant or interested party who has evidence to show that another person is committing or will commit an infringement of the right to use its or his registered trademark, and that failure to promptly stop the infringement will cause irreparable damages to its or his legitimate rights and interests, it or he may file an application with the court to order cessation of the relevant act and to take measures for property preservation before instituting legal proceedings in the court.
1. The official website of the State Intellectual Property Office of People’s Republic of China
( http://www.sipo.gov.cn/sipo_English/flfg/xgflfg/t20020416_34755.htm )