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Trademark
Registration
Legal
Basis
The
Chinese Trademark Law came into force on March 1,1983. It was revised
on February 22, 1993 and the revised law came into force on July 1,
1993. On October 27, 2001, it was revised again and the revised law
came into force on December 1, 2001. The Implementing Regulations of
the Chinese Trademark Law was enforced on September 15, 2002.
China
became a member of the World Intellectual Property Organization (WIPO)
on June 3,1980. On March 19, 1985, China acceded to the Paris Convention
for the Protection of Industrial Property (Stockholm Act). China became
party to the Madrid Agreement Concerning the International Registration
of Marks on October 4, 1989 and the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks on December
1, 1995. China became a party to the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration
of Marks on August 9, 1994.
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Types of Marks
The
term "trademark" used in the trademark law refers to marks
used on goods and for services. Collective marks and certification marks
are also registrable.
Said collective
marks mean signs,which
are registered in the name of a group, an association or other organizations
to be used by the members thereof in their commercial activities to
indicate their membership of the organizations.
Said certification
marks mean signs which are controlled by organizations capable of supervising
certain goods or services and used by entities or individual persons
outside the organization for their goods or services to certify the
origin, material, mode of manufacture, quality or other characteristics
of the goods or services.
Geographical indication can be registered as collective
mark or certification mark.
Registrable
Marks
Registrable
marks are any visually perceptible signs capable of distinguishing the
source of goods or services, including words, devices, letters of an
alphabet, numerals, three-dimensional signs, combination of colours
as well as the combination of such signs.
Registered
trademarks shall be so distinctive as to be distinguishable, and shall
not conflict with any prior right acquired by another person.
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Well-Known Trademarks
The
Trademark Office is responsible for recognition and administration of
well-known trademarks. When there is a dispute over the registrability
or infringement of a mark, the court may recognize a mark as a well-known
trademark on the case-by-case basis.
The following factors shall be considered in recognizing
a well-known trademark:
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reputation of the trademark in the relevant sector of
the public;
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duration of use of the trademark;
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duration, degree, and geographical scope of any publicity
for the trademark;
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history of protection of the trademark as a well-known
trademark; and
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other factors contributing to the reputation of the
trademark.
A trademark shall not be registered where the trademark
constitutes a reproduction, an imitation, or a translation of a well-known
trademark of another person not registered in China and is likely to
create confusion, if the trademark is the subject of an application
for registration in respect of goods which are identical with or similar
to the goods to which the well-known trademark applies. The use of such
trademark is also prohibited.
A trademark shall not be registered where the trademark
constitutes a reproduction, an imitation, or a translation of a well-known
trademark of another person already registered in China and is likely
to mislead the public and damage the interests of the owner of the registered
well-known trademark, if the trademark is the subject of an application
for registration in respect of goods which are not identical with or
similar to the goods to which the well-known trademark applies. The
use of such trademark is also prohibited.
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Unregistrable
Marks
The
following signs shall not be registered as trademarks:
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signs which consist exclusively of generic names, designs or models of
the goods in respect of which the trademark is used;
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signs which consist exclusively of direct indications of the quality, primary
raw materials, functions, use, weight, quantity or other characteristics
of the goods in respect of which the trademark is used; or
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signs which are devoid of any distinctive character.
Signs mentioned in the preceding paragraphs may be registered as trademarks
if they have acquired distinctive character through use and are capable
of being readily identified and distinguished.
If a three-dimensional sign consists exclusively of
the shape, which results from the nature of the goods themselves, the
shape of goods, which is necessary to obtain a technical result, or the
shape, which gives substantial value to the goods, it shall not be registered
as a trademark.
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Prohibited Marks
The following
signs shall not be used as trademarks:
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those identical with or similar to the national name, national flag, national
emblem, military flag, or decorations, of the People's Republic of China,
or identical with the names of the places or the names and designs of
landmark buildings where the central government agencies located;
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those identical with or similar to the national names, national flags,
national emblems or military flags of foreign countries, unless the
foreign government agrees on the use;
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those identical with or similar to the names, flags or emblems, of international
intergovernmental organizations, unless that the organizations agree
on the use or the public is not likely to be misled by such use;
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those identical with or similar to official signs or hallmarks showing
official control or warranty, unless the use is otherwise authorized;
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those identical with or similar to the symbols, or names, of the Red Cross
or the Red Crescent;
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those having the nature of discrimination against any nationality;
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those having the nature of exaggeration and fraud in advertising goods;
and
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those detrimental to socialist morals or customs, or having other unhealthy
influences.
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The geographical name of an administrative division
at or above the county level or a foreign geographical name well-known
to the public shall not be used as a trademark, unless the geographical
name has another meaning or the geographical name is used as a component
part of a collective mark or a certification mark. Registered trademarks
consisting of or containing geographical names shall continue to be valid.
Classification
China
adopts the International Classification of Goods and Services formulated
pursuant to the Nice Convention on November 1, 1988.
Designated goods/services for a trademark application
must be clear.
One application can only cover one class of goods/services.
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Conventional Priority
Conventional
priority can be claimed within six months from the date of filing outside
China. Priority documents must be submitted to the Trademark Office
within three months from the date of filing in China.
If a trademark
is first used on goods exhibited at an international exhibition sponsored
or recognized by the Chinese government, the applicant for registration
of trademark has a right of priority for a period of six months from
the date of exhibition of the goods.
First-to-File
Rule
The
Trademark Law adopts a first-to-file rule for obtaining trademark rights.
The first applicant to file an application for registration of a mark
will pre-empt all other later applications for the same mark in the
same class. If two or more applications are filed for the same mark
in the same class on the same day, the trademark used first shall be
accepted.
Where an
application to register a mark has been rejected due to its identity
or similarity to a previously registered mark, evidence of prior use
will not be helpful for the purpose of challenging the registration,
unless the mark is proved to be "well-known" under the law.
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Filing Requirement
It
is important to note that each application shall cover only one trademark
in one class. Each application must include the following documents:
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Application form;
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Power of Attorney, signed by the applicant. Notarization and legalization
of the Power of Attorney is not required;
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Five prints of the label, not exceeding 10cm or being less than 5cm in
length and breadth. If the mark is in color, one black and white label
shall be submitted in addition to the five color prints;
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Priority document, if priority is claimed.
Examination
Applications
are examined as to the formality and substance. Examination to the formality
will include the correctness of document and classification. Examination
to the substance will include the registrability of the mark and possible
conflict with prior rights.
Amendment of Application
Amendment
is only possible when required by the Trademark Office. At the stage
of substance examination, amendment may lead to the deletion of part
of the mark or of the specification.
Failure
to make an amendment required by the Trademark Office may lead to the
refusal of the application.
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Publication
Applications
that have passed examination will be published in the Trademark Gazette,
published weekly, for opposition purpose.
Registration/Duration/Renewal
A
mark will become registered if within the period of three months following
its publication there is no opposition filed against its registration,
or the opposition filed is decided not justifiable.
A
registration is valid for ten years starting from the date of registration
and can be renewed indefinitely, each time for ten years.
Renewal
applications shall be made within six months before the expiration date
or, subject to payment of an additional fee, within six months after
the expiration date. Each renewal application shall include an application
for renewal of trademark registration and a Power of Attorney.
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Madrid Registrations
An
international registration in China under the Madrid Agreement or Protocol
can be effective by notifying the Madrid Union Office to add China to
the list of registration countries for a particular mark. Under the
Madrid Agreement or Protocol, the Trademark Office has the right to
reject trademarks not conforming to the China Trademark Law.
Scope of Protection
A
registered mark is protected in respect of the goods/services registered,
unless it is recognized as well-known trademark. In particular, any
of the following acts shall be an infringement upon a registered mark:
- to use a trademark that is identical with
or similar to a registered trademark in relation to identical or similar
goods without the authorization of the owner of the registered trademark;
- to sell goods using a trademark that is
identical with or similar to a registered trademark in relation to identical
or similar goods without the authorization of the owner of the registered
trademark;
- to counterfeit or make, without authorization,
representations of a registered trademark of another person, or sell
such representations;
- to change a registered trademark
and put goods bearing the changed trademark on market without authorization
of the owner of the registered trademark; or
- to cause, in other respects, prejudice
to the exclusive right of another person to use a registered trademark.
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Appeal
An application
that is refused by the Trademark Office may be appealed to the Trademark
Review and Adjudication Board within fifteen days from receipt of the
notification.
If any party
is not satisfied with the decision made by the Trademark Review and
Adjudication Board, he may institute a legal action in court within
30 days from receipt of the notification.
Opposition
Any one
can, within three months from the date of publication, oppose against
a preliminarily approved trademark. The Trademark Office shall make
a written decision, which can be appealed to the Trademark Review and
Adjudication Board if any party is not satisfied with the decision.
If
any party is not satisfied with the decision made by the Trademark Review
and Adjudication Board, he may institute a legal action in court within
30 days from receipt of the notification.
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Cancellation/Dispute
Where a registered trademark belongs to the said unregistrable
marks or prohibited marks, or registration was obtained by fraud or
any other unfair means, the Trademark Office shall cancel the registered
trademark and any organization or individual may request the Trademark
Review and Adjudication Board to make an adjudication to cancel such
a registered trademark.
The owner of a trademark or any interested party may,
within five years from the date of registration, request the Trademark
Review and Adjudication Board to make an adjudication to cancel the
registered trademark in the flowing cases:
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the registered trademark constitutes a reproduction, an imitation,
or a translation, of a well-known trademark of another person not registered
in China in respect of identical or similar goods and is likely to create
confusion;
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the registered trademark constitutes a reproduction,
an imitation, or a translation, of a well-known trademark of another
person already registered in China in respect of non-identical or dissimilar goods
and is likely to mislead the public and damage the interests of the
owner of the registered well-known trademark;
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the registered trademark has been obtained by the agent
or representative of the original trademark owner without authorization;
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the registered trademark consists of or contains a geographical
indication in respect of goods not originating in the region indicated,
to such an extent as to mislead the public, unless such registrations
were made in good faith;
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the registered trademark conflicts with prior right
of another person, or
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the registered trademark is identical with a trademark
which has been used by another person and enjoys certain reputation,
and the registration was obtained by unfair means.
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Where the registration has been made in bad faith, the
owner of a well-known trademark shall not be bound by the five-year time
limit.
In addition to the situations as provided in the preceding
paragraphs, any person disputing a registered trademark based on prior
registration may, within five years from the date of registration, apply
to the Trademark Review and Adjudication Board for adjudication.
Cancellation
may also be filed at any time where the registered trademark has ceased
to be used for three consecutive years.
If
any party is not satisfied with the decision made by the Trademark Review
and Adjudication Board, he may institute a legal action in court within
30 days from receipt of the notification.
Recordation
of Change of Name/Address/Assignment/License
All
changes of registrant including name and/or address shall be recorded
with the Trademark Office. The recordal of change should be made for
all the registered trademarks owned by the same registrant at the same
time.
When applying for the assignment of a registered trademark,
both the assignor and assignee shall jointly file an application to
the Trademark Office. The assignee shall do the formalities required
in applying for the assignment of a registered trademark. Assignment is effective only when recorded
with the Trademark Office. All the same or similar registered
trademarks on the same goods or similar goods of the same registrant
should be assigned at the same time.
Assignment
of pending trademark application is also possible.
License
contract is to be recorded with the Trademark Office within three months
after the execution of such contract.
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Use Requirement
A
registration is subject to cancellation if not in use for three consecutive
years. Use of a trademark includes its use on goods, packages or containers,
or in trading documents, advertising, exhibition or other business activities.
Marking
The owner
of a registered trademark has the right to use the sign "registered
trademark" or other signs indicating registration. However, false
marking is prohibited.
Status of Unregistered Mark
An unregistered
mark can be used. However, an unregistered trademark is not protected
under the Trademark Law, unless it is recognized as a well-known trademark.
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Registering the Chinese Version
for a Latin Mark
Registering
the Chinese version for a Latin mark is necessary if the Chinese version
is to be used. Even if it is not to be used, registration of its Chinese
version is also necessary if the Latin mark has
de facto obtained its Chinese version that is well accepted by consumers
especially when the mark is coined.
Representation
Any
foreign nationals intending to apply for trademark registrations or
to handle other trademark matters in China shall be represented by an
agent licensed by the Chinese government.
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