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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 for the second time and the revised law came into force on December 1, 2001. On August 13, 2013, it was revised again and the revised law came into force on May 1, 2014. The Implementing Regulations of the Chinese Trademark Law was enforced on September 15, 2002. It was revised on April 29, 2014 and enforced on May 1, 2014.

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 Trademarks on October 4, 1989 and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Trademarks 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 Trademarks on August 9, 1994.

Types of Trademarks

The term "trademark" used in the trademark law refers to trademarks used on goods and for services. Collective trademarks and certification trademarks are also registrable.

Said collective trademarks 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 trademarks 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 trademark or certification trademark. 

Registrable Trademarks 

Registrable trademarks are any signs capable of distinguishing the source of goods or services, including words, devices, letters of an alphabet, numerals, three-dimensional signs, combination of colours, sounds, etc., 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. trademarks 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.

Well-Known Trademarks

In the procedure of examining a trademark registration or investigating and prosecuting trademark infringement, the Trademark Office may recognize a trademark as a well-known trademark. When handling a trademark invalidation case, the Trademark Review and Adjudication Board may recognize a trademark as a well-known trademark. In hearing a trademark civil or administrative case, the court designated by the Supreme People’s Court may recognize a trademark as a well-known trademark on the case-by-case basis.

The following factors shall be considered in recognizing a well-known trademark:

- reputation of the trademark in the relevant sector of the public;

- duration of use of the trademark;

- duration, degree, and geographical scope of any publicity for the trademark;

- history of protection of the trademark as a well-known trademark; and

- 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.

Unregistrable Trademarks

The following signs shall not be registered as trademarks:

- signs which consist exclusively of generic names, designs or models of the goods in respect of which the trademark is used;

- 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

- other 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.

Trademarks Prohibited from Use

The following signs shall not be used as trademarks: 

- those identical with or similar to the national name, national flag, national emblem, national anthem, military flag, army emblem, military anthem, or decorations, of the People's Republic of China, etc., and those identical with the name or symbol of a central government department of the State, or with the names of the places or the names and designs of landmark buildings where the central government agencies located;

- those identical with or similar to the national names, national flags, national emblems or military flags of foreign countries, etc., unless the foreign government agrees on the use;

- those identical with or similar to the names, flags or emblems, of international intergovernmental organizations, etc., unless that the organizations agree on the use or the public is not likely to be misled by such use;

- those identical with or similar to official signs or hallmarks showing official control or warranty, unless the use is otherwise authorized;

- those identical with or similar to the symbols, or names, of the Red Cross or the Red Crescent;

- those having the nature of discrimination against any nationality;

- those having the nature of fraud, being liable to mislead the public about the characteristics of the goods such as the quality or the place of origin; and

- those detrimental to socialist morals or customs, or having other unhealthy influences.
 

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 trademark or a certification trademark. Registered trademarks consisting of or containing geographical names shall continue to be valid. 

Classification of Goods and Services 

China adopts the International Classification of Goods and Services formulated pursuant to the Nice Convention. 
Designated goods/services for a trademark application must be clear. 
Multi class application is acceptable.

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 trademark will pre-empt all other later applications for the same or similar trademark in respect of identical or similar goods. If two or more applications are filed for the same trademark or similar trademark in respect of the same or similar goods on the same day, the trademark used first shall be accepted.

Filing Requirement

One application may cover more than one class. Each application must include the following documents:

- application form;

- Power of Attorney, signed by the applicant. Notarization and legalization of the Power of Attorney is not required;

- one clear print of the label, not exceeding 10cm or being less than 5cm in length and breadth. If the trademark is in color, one black and white label shall be submitted in addition to the color prints;

- priority document, if priority is claimed, and

- a copy of the certificate of the applicant’s identity which may be the ID card or passport of individual applicant or the certificate of good standing or extract of commercial register of the company.

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 trademark and possible conflict with prior trademark rights.  

Amendment to the 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 goods or services.

Failure to make an amendment required by the Trademark Office may lead to the refusal of the application. 

Publication

Applications that have passed examination will be published in the Trademark Gazette, published weekly, for opposition purpose. The prior right owner or any interested party may, within three months from the date of publication, oppose against the trademark.

Registration/Duration/Renewal

A trademark 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 twelve 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, a Power of Attorney and a copy of the certificate of the applicant’s identity which may be the ID card or passport of individual applicant or the certificate of good standing or extract of commercial register of the company.

Madrid Registrations

International applicant may file with WIPO the international application for registration of a particular trademark designating China 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 trademark 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 trademark:

-  to use a trademark that is identical with a registered trademark in relation to identical goods without the consent of the owner of the registered trademark;

-  to use a trademark that is similar to a registered trademark in relation to identical goods, or use a trademark that is identical with or similar to a registered trademark in relation to similar goods, without the consent of the owner of the registered trademark, and liable to create confusion;

-  to offer for sale goods that are in infringement of the exclusive right to use a registered trademark;

-  to counterfeit, or make without authorization, representations of a registered trademark of another person, or offer for sale such representations;

-  to change a registered trademark and put goods bearing the changed trademark on market without consent of the owner of the registered trademark;

-  to intentionally provide facilities to a person who infringes the exclusive right to use a registered trademark so as to help the person to execute an infringement on the exclusive right to use the registered trademark; or

-  to cause, in other respects, prejudice to the exclusive right of another person to use a registered trademark. 

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 the 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

The prior right owner or any interested party may, within three months from the date of publication, oppose against a preliminarily approved trademark. If the Trademark Office makes a decision to approve the application for registration of the trademark, a certificate of trademark registration shall be issued and the trademark shall be published. If the opponent party dissatisfies with the decision, he may, request the Trademark Review and Adjudication Board to declare the registered trademark invalid.

If the opposed party dissatisfies with the decision made by the Trademark Office for not approving the application for registration of trademark, he may, within fifteen days from receipt of the notification, apply for review to the Trademark Review and Adjudication Board. If the opposed party is dissatisfied with the decision of the Trademark Review and Adjudication Board, he may, within thirty days from receipt of the notification, institute legal proceedings with the people's court. The people's court shall notify the opponent party to participate in the legal proceedings as the third party.

Invalidation

Where a registered trademark belongs to the said unregistrable trademarks or prohibited trademarks, or registration was obtained by fraud or any other unfair means, the Trademark Office shall declare the registered trademark invalid and any organization or individual may request the Trademark Review and Adjudication Board to make an adjudication to declare such a registered trademark invalid.

The prior right owners 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 declare the registered trademark invalid in the flowing cases:

-   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;

-    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;

-   the registered trademark has been obtained by the agent or representative of the original trademark owner without authorization; or the trademark for which a registration is applied is identical or similar to an early used trademark of another party that is not registered, in respect of the same or similar goods, and the applicant being of contract, business or other relationship except those mentioned above, is fully aware of the existence of the trademark owned by the other party;

-  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;

-   the registered trademark is identical with or similar to a trademark of another person that has been registered or applied for registration in respect of identical or similar goods,

-   the registered trademark is of such a nature as to infringe the existing earlier right of another person or

-   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.

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.

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.

Cancellation

If a registered trademark has become a generic name of its designated goods or has not been used for three consecutive years without justified reasons, any entity or individual may request the Trademark Office to cancel the registered trademark.

Use of a trademark includes its use on goods, packages or containers, or in trading documents, advertising, exhibition or other business activities.

Statutory Time-limit for Examination

The Trademark Law provides statutory time limits for the Trademark Office and the TRAB to make decisions on procedures such as trademark registrations, reviews, oppositions, invalidations and cancelations.

Procedure

Time-limit (month)

Extension (month)

Trademark application

9

N/A

Review on rejection

9

3

Opposition

12

6

Review on opposition

12

6

Invalidation on absolute ground

9

3

Review on invalidation on absolute ground

9

3

Invalidation on relative ground

12

6

Cancellation

9

3

Review on cancellation

9

3

The time limits do not include:

–   period of service by publication

–   period of supplementing evidence, making amendments, re-filing counter-arguments due to the change of the party concerned,

–   period of submitting use evidence, negotiation or drawing lots in case of applications for identical or similar trademarks filed on the same day,

–   waiting for the submission of priority certificates, and

–   suspension period waiting for the result of the case concerning the prior rights upon the request of the party concerned.  

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 sign an agreement of assignment and 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 approved and published by the Trademark Office. All the same or similar trademarks on the same or similar goods of the same registrant should be assigned at the same time.

Assignment of pending trademark application follows the same procedure as registered trademarks.

If the licensor authorizes another person to use his registered trademark, he should submit the trademark license to the Trademark Office for recording, and the Trademark Office shall publish it.

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. 

Registering the Chinese Version for a Latin Mark

Registering the Chinese version for a Latin trademark 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 trademark has de facto obtained its Chinese version that is well accepted by consumers especially when the trademark is coined. 

Representation

Any foreign nationals intending to apply for trademark registrations or to handle other trademark matters in China shall be represented by a legally set-up trademark agency.