China

Who may apply for a trade mark?

According to China Trademark Law, any natural person, legal person, or other organisation that needs to acquire the exclusive right to the use of a trade mark for the goods it or he or she produces, manufactures, processes, selects, or markets can file an application for trade mark registration. In practice, if a Chinese individual wants to file a trade mark application, he or she should submit a business license of individual business operation, otherwise such application will not be accepted. This requirement does not apply to foreign individual applicants.

What is the scope of a normal trade mark?

The scope of a trade mark is defined by its designated goods or services according to the class and subclass covered. A registered trade mark can enable its owner to prevent or stop others from registering or using the same or confusingly similar trade marks with the same or similar goods and services. If a trade mark is well-known in China, it can also prevent or stop others from registering or using same or confusingly similar trade marks with dissimilar goods and services. The recognition of well-known trade marks is conducted on a case-by-case basis.

What time constraints are there on registering a trade mark?

There is no time constraints for filing a trade mark in China. Whether the trade mark is filed before or after being used in China will not affect the examination over the application. There are possible official deadlines during the prosecution of trade mark application, for example, during the formality examination stage, if the TMO issues a notification of amendment, the applicant should respond within 30 days from receipt of the notification; during the substantial examination stage, if the TMO issues a notification of rejection or partial rejection, the applicant would have a deadline of 15 days from receipt of the notification in order to file a review over refusal to the TRAB; after the trade mark application is preliminarily approved and published on the official gazette, anyone can file an opposition against the trade mark application within the three month publication period.

How long does registration take and what are the standard costs?

It takes around 12-18 months from filing the trade mark application to its approval for registration where there is no office action and everything goes smoothly; the official fee for filing one trade mark application in one class is CNY1000 (roughly equivalent to $167), and there may be additional fees if the designated goods or services are more than ten.

How are trade marks classified?

Goods and services are classified according to Chinese Classification which is primarily based on Nice Classification (10th edition) but with slight modifications by the China Trademark Office. In each class, there are subclasses, which further divide the goods and services, and usually those in the same subclass are considered similar and those in different subclasses are considered dissimilar with exceptions as explicitly stated in the note in the Classification. In some subclasses, the goods and services are further divided into paragraphs, and the rules of determining similarity among different paragraphs in the same subclass are determined also by the note in the Classification.

Is there anything in particular about the examination process that applicants should be aware of?

There are two stages of examination, the formality examination and the substantial examination. In the formality examination, the examiner is quite strict over the naming of the designated goods and services, and may issue office action if any item is not standard; as for the substantial examination, to reduce the risk of being rejected due to prior similar marks, it is suggested to conduct a pre-filing search. Besides, as mentioned above, the official deadlines in China are always very short and non-extendible, which requires the applicant to react very quickly once receiving an office action.

What constitutes use of the trade mark? When must this be demonstrated?

Trade mark use over goods may include: 1) using the trade mark on the package, container, label, specification, product brochure of the products; 2) using the trade mark on documents related to business transaction of the product sales, such as contracts, invoices, receipts, bill of lading, import/export certificates, Customs documents; 3) using the trade mark in radio broadcast, TV or other media, or on the distributed publications with legitimate authorisation for promotion purposes; 4) using the trade mark on advertisement boards, post advertisement or other types or advertisement; 5) using the trade mark in exhibition and expo. Trade mark use over services may include: 1) using the trade mark on brochures, sign board, decoration, menu, fee schedule, coupon, stationery, letter paper; 2) using the trade mark on documents related to the services, such as contracts, invoices, receipts, bill of lading. Only when a third party files non-use cancellation against the trade mark registered for three years, the registrant needs to submit use evidences in order to overcome the cancellation.

When is a trade mark considered descriptive?

If a trade mark only and directly describes the quality, main material, function, purpose, weight, quantity or other characteristics of the designated goods or services, it will be considered descriptive.

When is it considered generic?

If a trade mark only and directly bears the generic name, shape or model number of the designated goods or services, it will be considered generic.

What aspects of a mark can be considered objectionable or immoral?

According to Article 10 of China Trademark Law, the following signs cannot be used or registered as trade marks: 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 when 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 inter-governmentaI organisations, except that the organisations 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 authorised; 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; and 8) those detrimental to socialist morals or customs, or having other unhealthy influences.

Are there grounds for registering as a geographical indication?

The geographical names of the administrative divisions at or above the county level and the foreign geographical names well known to the public shall not be used as trade marks, but such geographical terms as have other meanings or are a part of collective marks or a certification mark shall be excluded. Where a trade mark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid. Where a trade mark contains a geographic indication of the goods in respect of which the trade mark is used, the goods are not from the region indicated therein and it misleads the public, it shall be rejected for registration and prohibited from use; however, any trade mark that has been registered in good faith shall remain valid.

Can three-dimensional or other unconventional marks be registered?

Three-dimension marks and colour-combination marks can be registered in China. Other types of unconventional trade mark such as sound, motion or smell are not registrable under the Trademark Law of China.

What constitutes a well-known mark?

The following factors shall be considered in determining whether or not a trade mark is well-known: (1) the degree of public recognition in its trading areas; (2) the duration in which it has been in use; (3) the duration and extent of its advertising, and the geographical areas that the advertising has covered; (4) the records of protection it has gained as well-known trade mark; and (5) other factors serving to make it well-known.

Can you trade mark a personal name?

If a trade mark registration will cause damage to the name right of a third party, such a trade mark shall not be registered. In practice, when determining the possibility of causing damages to the name right of a third party, the degree of public recognition of the person will be taken into consideration, such as names of celebrities.

How can a mark be amended?

The specimen of a trade mark cannot be amended once it is filed for registration; the designated goods or services can only be amended when the TMO issues the official notification of amendment requesting the applicant to amend the goods or services, whereas in other circumstances, the applicant can only delete goods or services from the application or registration; the applicant's name and address can be amended by filing the application for modification of name and address of trade mark applicant to the TMO.

How do you appeal against a denied application?

If a trade mark application is rejected (or partially rejected) by the TMO, the applicant can file a review pleading to the TRAB within 15 days from receipt of the notification of rejection, and can submit supplementary materials to the TRAB within three months from the filing date of the review pleading. The TRAB will then examine the review and make a decision on whether the trade mark can be approved (or partially approved) in around 6-12 months. If the applicant is not satisfied with the TRAB decision, it can further appeal to Beijing No 1 Intermediate Court for administrative litigation over the TRAB decision, if either the applicant or the TRAB is not satisfied with the court decision of 1st instance, it can further appeal to Beijing Higher Court for the 2nd instance, which decision would be the final one.

How do you oppose another's application?

Once a trade mark is preliminarily approved and published on the TMO Gazette, anyone can file opposition against it within three months to the TMO. After the opposition application is filed, the opponent may submit supplementary materials to the TMO within three months from the filing date of the opposition; then the TMO will notify the applicant of the trade mark to respond to the opposition within 30 days, and the applicant (or opposed party) may submit supplementary materials to the TMO within three months from the filing date of the response. Then, the TMO will make a decision on whether the opposed trade mark should be rejected or registered. If either the opponent or the opposed party is not satisfied with the TMO decision of opposition, it can appeal to the TRAB for an opposition review; and then the TRAB decision could be further appealed to the court for two instances.

When is a mark considered to be used in bad faith?

If the applicant of a trade mark knew in advance that this trade mark belonged to another company, such as there being previous business cooperation between the two, such registration is considered bad faith.

When must registration be renewed and at what cost? How is a trade mark lost?

Renewal can be filed within the period from six months before the expiry date to six months after the expiry date; if no renewal is filed during this period, it will be considered abandoned. The official fee for one trade mark renewal of one class is CNY2000, and if the renewal is filed within the six months after the expiry date, which is called the grace period, an additional official fee of CNY500 will be incurred.

How are trade marks jointly owned, transferred or assigned?

Two or more natural persons, legal persons, or other organisations may jointly file an application for one trade mark with the TMO. To assign a trade mark, the assignor and assignee shall sign an assignment agreement and jointly file an application to the TMO. After the assignment of a trade mark is approved, it will be published. The assignee shall enjoy the exclusive right to the use of the trade mark starting from the date of the publication.

What are the different avenues for infringement? What is the procedural format and timing for each?

1) AIC action: the procedure may vary from city to city, but usually after the complaint is received, it takes around 3-6 months to be completed; 2) civil or criminal litigation to the court: usually takes 1-1.5 years for each instance; 3) Customs seizure: after notifying Customs to seize the imported or exported products which are suspicious for infringement, the applicant needs to pay the bond, and initiate litigation at local court.

How can counterfeiting be contested?

The defendant of a trade mark infringement litigation can make the following defences: 1) dissimilarity of trade marks; 2) dissimilarity of goods or services; 3) low likelihood of confusion; 4) invalidity of the trade mark right; 5) descriptive use, non-commercial use.

What rules cover passing off or unfair competition?

Anti-Unfair Competition Law.

Is parody considered a valid defence?

Usually parody cannot serve as a valid defence in trade mark infringement litigation, but it also depends on the specific situation of the case. The court may consider factors such as whether it constitutes commercial use of the trade mark, whether consumers may be misled or confused, whether such use may dilute or defame the trade mark, and whether such use may unfairly take advantages of the trade mark owner.

How about descriptive use, fair use or use in good faith?

Usually, descriptive use can be considered a valid defence in trade mark infringement litigation; whereas, there is no clear definition of fair use or use in good faith under China Trademark Law or relevant regulations. If a party has been using a trade mark without registering it, and another party registers a same or similar trade mark in China, the earlier user cannot continue its use nor successfully defend itself in the trade mark infringement litigation that it had earlier use, unless it files dispute cancellation against the other's trade mark registration and requests the court to suspend the litigation in wait of the decision by the TRAB over the dispute cancellation.

What is it worth conducting a survey to provide evidence of reputation?

A public survey may serve as one of the evidences to prove the reputation of a trade mark in China, but considering that there are many factors influencing the possible result of a survey, it alone is not enough; other evidences such as the scope and extent of sales and advertisement are also important.

How do you appeal in enforcement situations? What other remedies are available?

Either party not satisfied with AIC decisions can appeal to the court; either party not satisfied with first instance court decisions can appeal to the court at a higher level.

What arrangements are there available for trade marks in bankruptcy?

In the procedure of bankruptcy, trade mark as a kind of intangible property of the company is vested in the liquidator and may be sold or auctioned with other properties. The new owner of the trade mark shall conduct the assignment recordal to the TMO in order to transfer the trade mark right. The procedure of such assignment recordal is same as ordinary assignment between two parties, and after the assignment of a trade mark is approved, it will be published. The assignee shall enjoy the exclusive rights to the use of the trade mark starting from the date of the publication.

How does this jurisdiction interact with other international treaties?

China is a signatory to the Paris Convention, and is also party to the Nice Agreement of classification of goods and services, as well as the Madrid Agreement and Madrid Protocol.

Gloria Wu

Gloria Wu received her law degree from Beijing Foreign Studies University School of Law in 2005. She has also received training in international finance law and intellectual property law at DePaul University College of Law in the United States. Wu joined Kangxin Partners in 2005 as an intellectual property attorney. Wu’s practice focuses primarily on the areas of trade mark, copyright, and domain names. She is highly experienced in all IP-related litigation, administrative actions, customs enforcement, and IP strategy consulting. As a leading member of the trade mark department, she has helped many large companies establish and improve their trade mark strategy and management systems, and has successfully resolved many complex legal disputes.