Legal Framework:

1.    What is the statutory or other source of trademark rights?

The Trademark Law of the People’s Republic of China.

2.    How do trademark rights arise (i.e., through use or by registration)?

By registration.

3.    What is the statutory or other source of the trademark registration scheme?

The Trademark Law of the People’s Republic of China and the Regulations for the Implementation of the Trademark Law of the People’s Republic of China.

What Constitutes a Trademark:

4.    What types of designations or other identifiers may serve as trademarks under the law?

Any signs – including words, graphs, letters, numbers, three-dimensional symbols, colour combinations, sounds or any combination thereof – that are capable of distinguishing the goods of a natural person, legal person or other organisation from those of others may be applied for registration as trademarks.

5.    What are the requirements for a designation or other identifier to function as a trademark?

A trademark submitted for registration must bear noticeable characteristics and be readily distinguishable, and must not conflict with legitimate rights previously obtained by others.

6.    What types of designations or other identifiers are ineligible to function as trademarks?

None of the following signs may be used as trademarks:

·         signs that are identical or similar to the state name, the national flag, emblem or anthem, the military flag, emblem or songs or medals of the People’s Republic of China; or signs that are identical to the names or emblems of central state organs, the names of specific locations where central state organs are seated, or the names or designs of landmark buildings;

·         signs that are identical or similar to the state name, national flag, national emblem or military flag etc of a foreign country, except with the consent of the government of that country;

·         signs that are identical or similar to the name, flag or emblem of an international inter-governmental organisation, except with the consent of that organisation or except where it is unlikely to mislead the public;

·         signs that are identical or similar to an official mark or inspection stamp that indicates control and guarantee, except where authorised;

·         signs that are identical or similar to the symbol or name of the Red Cross or the Red Crescent;

·         signs that discriminate against any nationality;

·         signs that are deceptive and likely to mislead the public in terms of the quality, place of production or other characteristics of the goods; and

·         signs that are detrimental to socialist ethics or customs, or that have other unwholesome influences.

No geographical names of administrative divisions at or above the country level or foreign geographical names known to the public may be used as trademarks, except where the geographical name has another meaning or constitutes part of a collective trademark or certification trademark. Registered trademarks in which geographical names are sued shall remain valid.

None of the following marks may be registered as trademarks:

·         a mark which bears only the generic name, design or model number of the goods concerned;

·         a mark which only directly indicates the quality, principal raw materials, function, use, weight, quantity or other features of the goods; or

·         a mark that otherwise lacks distinctive character.

However, such a mark may be registered as a trademark if it has acquired distinctive features through use and is readily distinguishable.

No application for registration of a three-dimensional symbol as a trademark may be granted where the sign merely indicates the shape inherent in the nature of the goods concerned, or is dictated by the need to achieve technical effects or the need to give the goods substantive value.

Where a trademark bears a geographical indication of the goods and the place indicated is not the origin of the goods in question, thus misleading the public, the trademark shall not be registered and its use shall be prohibited. However, where the registration is obtained in good faith, it shall remain valid.

Registration Procedure:

7.    Which governing body (i.e., the trademark office) has control over registration procedures?

The China Trademark Office (CTMO).

8.    What fees does the trademark office charge for the application, during the prosecution, and for issuance of the registration?

RMB300 for application per mark per class. If the designated goods or services exceed the basic 10 items, an extra fee of RMB30 for each additional item is charged.

There is no official fee for issuance of the registration.

9.    Does the trademark office use the Nice Classification scheme?

Yes, the CTMO uses the Nice Classification.

10.  Are “class-wide” applications allowed, or must the applicant identify the specific goods or services on which the mark will be used? 

Class-wide applications are not allowed in China. The applicant should identify the specific goods or services for which the mark will be used.

11.  Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

To apply for registration, the applicant need not prove actual use or bona fide intent to use the mark.

12.  Does the trademark office perform relative examination of trademark applications (i.e., searches for earlier conflicting marks)?

Yes, the CTMO searches for earlier conflicting marks.

13.  What types of examination does the trademark office perform other than relative examination?

The CTMO also performs absolute examination – that is, whether the mark itself can be used or registered as a trademark.

14.  Apart from confusion with a senior mark, descriptiveness, or genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Marks that are identical or similar to the state name, the national flag, emblem or anthem, the military flag and many other conditions cannot be registered as trademark in China. Please refer to question 2.3 for detailed explanation.

15.  Is there a separate or supplemental register on which descriptive marks may be registered?

A descriptive mark may be registered as a trademark if it has acquired distinctive features through use and is readily distinguishable. There is no separate or supplemental register for descriptive marks.

16.  Can a third party object to registration of a mark before the application has been published (e.g., by letter of protest to the trademark office)?

A third party cannot object to registration of a mark before the application has been published in China. Opposition after publication of the application is the only way for a third party to object to the registration of a mark.

17.  Must the applicant use the trademark commercially in order to obtain a registration?

Commercial use is not required to obtain a registration of a trademark in China.

18.  How much time does it typically take from the filing of the application to the first office action?

It takes around two months from filing of the application to the first notification for amendment.

It takes around six to nine months from filing of the application to rejection.

19.  How much time does it typically take from the filing of the application to publication?

For a smooth application, it takes around six to nine months from filing of the application to publication.

Appeals:

20.  If the trademark office refuses registration, to what body can the applicant appeal?

The applicant can appeal before the Trademark Review and Adjudication Board (TRAB).

21.  What is the procedure for an appeal of a trademark office refusal?

If dissatisfied with the refusal, the applicant is entitled to pursue the application by lodging an appeal against the China Trademark Office’s refusal with TRAB within 15 days of the date of receipt of the refusal. If the refusal is sent via registered mail, the date indicated by the postmark shall be the date on which the applicant receives the notification. If the refusal is sent via electronic form, the notification will be deemed as received by the applicant 15 days after it was sent. Extension is not allowed.

22.  Can the reviewing body’s decision be appealed, and if so, to what body and by what procedure?

According to Article 34 of the Trademark Law of the People’s Republic of China, if dissatisfied with the adjudication, the applicant may file suit against TRAB’s adjudication before the Beijing Intellectual Property Court within 30 days of the date of receipt of the adjudication.

Oppositions:

23.  Can a third party oppose a trademark application?

Yes, a third party can oppose a trademark application during the three-month opposition period.

24.  Who has standing to oppose a trademark application?

If a holder of prior rights or an interested party holds that the published trademark is in violation of relative grounds for refusal, it may oppose the mark within the opposition period.

Any party that is of the opinion that the published mark is in violation of absolute grounds for refusal may oppose the mark within the opposition period.

25.  What is the period of time in which one can oppose a trademark application?

The opposition period is three months as from the publication date of the mark.

26.  Which body hears oppositions?

The China Trademark Office (CTMO).

27.  What is the process by which an opposition proceeds?

Where an opposition is raised, the CTMO will send a notification and a copy of the opposition to the opposed party. The opposed party has 30 days from receipt of the notification to respond; further evidence can be submitted within three months of the response date. Whether the opposed party responds or not, the CTMO will decide whether to approve the registration of the mark after investigation and verification.

28.  Can the body’s decision in an opposition be appealed, and if so, to what body and by what procedure?

If dissatisfied with the CTMO’s decision to approve registration of the trademark, the opponent may request the Trademark Review and Adjudication Board (TRAB) to declare the registration invalid.

If dissatisfied with the CTMO’s decision not to approve registration of the trademark, the opposed party may apply for a second review to TRAB within 15 days of receipt of the relevant notice.

Rights of Registered and Unregistered Marks:

29.  What, if any, protection is afforded to unregistered trademarks?

Where a trademark used for identical or similar goods is a reproduction, imitation or translation of another person’s well-known trademark not registered in China and is liable to cause public confusion, no application for registration may be granted and its use shall be prohibited.

An application to register a trademark for identical or similar goods shall not be approved if:

·         the trademark under application is identical or similar to an unregistered trademark already used by another party;

·         the applicant is clearly aware of the existence of the trademark of that other party due to contractual, business or other relationships with the latter; and

·         that other party raises an opposition to the trademark application.

No trademark applicant may, by illegitimate means, seek to register a trademark that is already in use by another person and has acquired a certain influence.

Anyone that uses another party’s unregistered well-known trademark as a trade name and thereby misleads the public, which constitutes an act of unfair competition, shall be dealt with in accordance with the Anti-unfair Competition Law of the People’s Republic of China.

If, before a trademark applicant submits its trademark application, another party has used a trademark that has acquired certain influence and is identical or similar to the registered trademark for the same or similar goods or services, the holder of the exclusive right to use the registered trademark has no right to prohibit that party from continued use of the trademark within the original scope of use. However, the right holder may require the latter to add a mark to distinguish between the two.

30.  What legal rights are conferred by a trademark registration?

The exclusive right to use the registered trademark. However, this right is limited to trademarks which are registered upon approval and to goods for which use of the trademark is approved.

Any of the following acts shall constitute infringement of the exclusive rights to use a registered trademark:

·         using a trademark that is identical to a registered trademark for the same kind of goods without a licence from the trademark owner;

·         using a trademark that is similar to a registered trademark for the same kind of goods, or using a trademark that is identical or similar to a registered trademark for similar goods, without a licence from the trademark owner, where such use is likely to cause confusion

·         selling goods that infringe the exclusive right to use a registered trademark;

·         counterfeiting, or making without authorisation, representations of another person’s registered trademark, or selling such representations;

·         altering a registered trademark without the permission of its owner and selling goods bearing such an altered trademark;

·         intentionally committing acts that infringe the exclusive right to use a trademark, or facilitating the commission of such acts; and

·         impairing another party’s exclusive right to use a registered trademark in any other manner.

31.  If there is a separate register for descriptive marks, what legal rights are conferred by a registration thereon?

No.

Enforcement and Remedies for Violations of Trademark Rights:

32.  What remedies are available against trademark infringement?

Customs measures: The owner of a registered trademark can record its registered trademark right with the General Administration of Customs of the People’s Republic of China. Upon discovering suspected infringing goods pending import or export, the trademark owner may present an application to Customs at the port of entry to detain such goods and provide Customs with security. Customs will then detain the suspected infringing goods.

On discovering any imports or exports that are suspected of infringing a recorded registered trademark right, Customs shall immediately notify the trademark owner in writing of the suspected infringement. If the trademark owner presents an application and provides security within three working days of the date of service of this notification, Customs will detain the suspected infringing goods.

Customs shall investigate and then determine, within 30 working days of the date of detention, whether the suspected infringing goods are in fact infringing. The suspected infringing goods shall be confiscated by Customs if it determines that they have infringed a registered trademark right. Where the import or export of infringing goods constitutes a crime, criminal liability shall be investigated according to the law.

AIC measures: A trademark owner or an interested party may further request the relevant administrative department for industry and commerce (AIC) to address the issue. If the AIC finds that an infringement has occurred, it shall order the relevant party to immediately cease the infringing acts, and shall confiscate and destroy the infringing goods and instruments mainly used to manufacture the infringing goods and forge the registered trademark. Where the illegal business revenue is RMB50,000 or more, a fine of up to five times the illegal business revenue may be imposed; where there is no illegal business revenue or the illegal business revenue is less than RMB50,000, a fine of up to RMB250,000 may be imposed thereon.

If a party commits trademark infringement on two or more occasions within five years or falls under any other serious circumstances, it shall be subject to more severe punishment.

If a party is unaware of the infringing nature of products that it sells, can prove that the products were obtained by legitimate means and can provide information on the suppliers of the products, the AIC shall order it to stop selling the products.

In case of a dispute over the amount of damages due for trademark infringement, the parties may apply to the AIC for mediation, or may file suit at the people’s court in accordance with the Civil Procedure Law of the People’s Republic of China. If the parties fail to reach agreement through mediation, or fail to execute the mediation agreement once it has become effective, the parties may file suit at the people’s court in accordance with the Civil Procedure Law of the People’s Republic of China.

The AIC has the power to investigate any act of trademark infringement. If it suspects that a crime has been committed, it shall promptly transfer the case to a judicial department for handling in accordance with the law.

In investigating a case of suspected trademark infringement, an AIC at or above county level may conduct inspections and seal or seize articles that are proven to have been used for the infringement.

Judicial remedy: A trademark owner or an interested party may further file suit before the people’s court.

The amount of damages for trademark infringement shall be determined based on the actual loss suffered by the trademark owner as a result of the infringement. If it is difficult to determine the actual loss suffered, the amount of damages may be determined according to the profits earned by the infringer. If it is difficult to determine both the loss of the trademark owner and the profits earned by the infringer, the amount of damages may be reasonably determined by reference to the multiple of royalties payable for a licence for the trademark. If the infringement is malicious and serious, the damages may be doubled or trebled. The amount of damages awarded shall cover reasonable expenses incurred by the trademark owner in stopping the infringing act.

If the trademark owner has exhausted its efforts in discharging its burden of proof, but the account books and materials relating to the infringement are mainly controlled by the infringer, the people’s court may order the infringer to submit account books and materials relating to the infringement. If the infringer fails to provide such account books or materials, or provides false account books or materials, the people’s court may render a judgment on the amount of damages based solely on the claims of, and the evidence presented by, the trademark owner.

If it is difficult to determine the actual loss suffered by the trademark owner as a result of the infringement, the profits earned by the infringer from the infringement or the royalties for a licence, the people’s court shall render a judgment awarding damages in an amount of up to RMB3 million based on the circumstances of the infringement.

If the trademark owner or an interested party proves that another party has infringed or will soon infringe its trademark, and that unless promptly stopped, such infringement will cause irreparable damage to its legitimate rights and interests, it may, in accordance with the law, apply to the people’s court for an injunction to preserve assets before a lawsuit is filed.

In order to stop an infringement, and where evidence may vanish or be destroyed, or may become unobtainable in the future, the trademark owner or interested party may, in accordance with the law, apply to the people’s court for evidence preservation before filing a lawsuit.

If a party, without the permission of the owner of a registered trademark, uses an identical trademark for the same kind of goods, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

If a party counterfeits or makes without permission representations of another person’s registered trademark, or sells such representations, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

If a party knowingly sells goods bearing a counterfeit registered trademark, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

33.  What remedies are available against trademark dilution?

According to the Trademark Law, where a trademark used for different goods or services reproduces, imitates or translates a registered well-known trademark, and such use misleads the public in a way that is likely to impair the interests of the owner of the registered well-known trademark, no application for registration may be granted and its use shall be prohibited. The owner of the registered well-known trademark or an interested party may file suit before the people’s court or request the relevant administrative department for industry and commerce (AIC) to address the dispute.

34.  Does the law recognize remedies against other harms to trademark rights besides infringement and dilution?

Anyone that uses the registered trademark or the unregistered well-known trademark of another party as a trade name in a way that misleads the public, which constitutes an act of unfair competition, shall be dealt with in accordance with the Anti-unfair Competition Law of the People’s Republic of China.

35.  What is the procedure for pursuing claims for violation of trademark rights?

The trademark owner or an interested party may file suit before the people’s court or request the relevant AIC to address the dispute. The AIC’s decision may be appealed before the people’s court. There are usually two instances of appeal.

36.  What typical defenses are available to a defendant in trademark litigation?

If, before an applicant applies to register a trademark, another party has used an identical or similar trademark that has acquired a certain influence for the same or similar goods or services, the applicant cannot prohibit that party from continued use of its trademark within the original scope of use. However, the applicant may require the latter to add a proper mark for the purposes of distinguishing between the two marks.

Where a trademark owner seeks damages for infringement and the alleged infringer counterclaims that the trademark owner has never used the registered trademark, the people’s court may require the trademark owner to provide evidence of actual use of the registered trademark in the three years prior to the lawsuit. The alleged infringer shall not be liable for compensation if the trademark owner cannot prove actual use of the registered trademark in the three years prior to the lawsuit, and further cannot prove other losses suffered as a result of the infringement.

If a party is unaware of the infringing nature of products which it is selling, can prove that the products were obtained by legitimate means and can provide information on the suppliers of the products, it shall not be liable for compensation.

37.  What is the procedure for appealing a decision in a trademark case?

If dissatisfied with a first-instance decision of the local people’s court, a party may appeal to the people’s court at the next level within 15 days of the date of service of the decision. There are usually two instances of appeal.

Maintenance and Removal of Registrations:

38.  What is the length of the initial term of registration and what is the length of renewal terms?

A registered trademark remains valid for 10 years in China, as from the date on which the registration is approved, and may be renewed for subsequent 10-year periods thereafter, as from the date immediately following the expiry date of the last period of validity.

39.  What if anything must be submitted to the trademark office to maintain or renew a registration?

·         An application form for renewal;

·         A certificate of incorporation;

·         An executed power of attorney; and

·         The renewal fee.

40.  What are the grounds for cancelling a trademark registration?

According to the Trademark Law, a registration will be cancelled if:

·         the trademark is ineligible to function as trademark or its registration was obtained by fraudulent or other illegitimate means;

·         the registration infringes another party’s prior civil rights; or

·         the trademark has become the generic name of the goods for which its use is approved or has not been used for three consecutive years without a justifiable reason.

41.  Under what circumstances may the trademark office cancel a registration on its own?

According to the Trademark Law, a trademark may be cancelled at the initiative of the trademark office if it is ineligible to function as a trademark or if its registration was obtained by fraudulent or other illegitimate means. 

If a trademark owner, without authorisation, alters the registered trademark, its name or address of or other registered information, it will be ordered to correct such alteration within a timeframe specified by the relevant local administrative department for industry and commerce (AIC); if it fails to do so, the registration will be cancelled.

42.  What is the procedure by which a third party may seek cancellation of a trademark registration?

According to the Trademark Law, if a trademark is ineligible to function as trademark or if its registration was obtained by fraudulent or other illegitimate means, other entities or individuals may request the Trademark Review and Adjudication Board (TRAB) to invalidate the trademark.

If a trademark registration infringes another party’s prior civil rights, that party or another interested party may, within five years of registration of the trademark, request TRAB to invalidate the trademark. If the registration was obtained in bad faith, the owner of a well-known trademark is not bound by the five-year restriction in seeking invalidation.

If a registered trademark has become the generic name of the goods for which it is used or has not been used for three consecutive years without a justifiable reason, any entity or individual may apply to the China Trademark Office (CTMO) for revocation of the registered trademark.

43.  What is the procedure for appealing a decision cancelling a registration?

An interested party which is dissatisfied with a trademark office decision to cancel or invalidate a registered trademark may apply for a review before TRAB within 15 days of receipt of notice of the decision from the CTMO. If a party is dissatisfied with TRAB’s decision, it may file suit before the people’s court within 30 days of receipt of notice of the decision from TRAB. 

Where other entities or individuals request TRAB to invalidate a registered trademark and are dissatisfied with its decision, they may file suit before the people’s court within 30 days of receipt of notice of the decision.

Licensing:

44.  Are there particular requirements, such as quality control by the licensor, for a trademark license to be valid?

A licensor must supervise the quality of the goods for which the licensee uses its registered trademark, and the licensee must guarantee the quality of the goods on which the registered trademark is used.

If any person is authorised to use another party’s registered trademark, the name of the licensee and the origin of the goods must be indicated on goods that bear the registered trademark.

45.  Must trademark licenses be recorded with the trademark office or other governing body?

A licensor that licenses others to use its registered trademark must submit the trademark licence to the China Trademark Office (CTMO) for recordal and the CTMO shall publicise the licence accordingly. In case of failure to record, the licence cannot be enforced against a bona fide third party.