Legislation
The Trademark Law is enacted to improve the administration of trademarks, protect the exclusive right to use a trademark, and encourage producers and traders to guarantee the quality of their goods and services and maintain the reputation of their trademarks, with a view to protecting the interests of consumers, producers and traders and promoting the development of the socialist market economy.
Trademark Law & Implementing Regulations
Trademark Law: Adopted by the Standing Committee of the National People's Congress on August 23, 1982 and came into effect on March 1, 1983; amended for the first time on February 22, 1993; amended for the second time on October 27, 2001; amended for the third time on August 30, 2013; amended for the fourth time on April 23, 2019 and came into effect on November 1, 2019.
Implementing Regulations: Promulgated by the State Council on August 3, 2002; amended on April 29, 2014 and came into effect on May 1, 2014.
Conventions
China became a member of the Convention Establishing the World Intellectual Property Organization on June 4, 1980, the Paris Convention for the Protection of Industrial Property on March 19, 1985, the Madrid Agreement Concerning the International Registration of Marks on October 4, 1989, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks on August 9, 1994, the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks on December 1, 1995 and the Marrakesh Agreement Establishing the World Trade Organization on December 11, 2001.
Trademark Administration
The Trademark Office of the China National Intellectual Property Administration (the CNIPA) is responsible for the registration and administration of trademarks in China, as well as the settlement of disputes relating to trademarks.
The CNIPA is responsible for conducting the operational guidance and policing of trademark enforcement, including formulating and guiding standards of trademark enforcement.
State Administration for Market Regulation is responsible for the organization and overall guidance of trademark enforcement.
Types of Trademarks
Four types of registered trademarks in China include trademarks for goods, service marks, collective marks and certification marks.
A trademark for goods means a distinctive sign used on goods to distinguish the origin of the goods produced, manufactured, processed, selected or marketed.
A service mark means a distinctive sign used for services to distinguish the provider of the services.
A collective mark means a distinctive sign registered in the name of a group, association or other organization for the members thereof to use in their commercial activities as indications of their membership in the organization.
A certification mark means a distinctive sign controlled by an organization capable of supervising certain goods or services, and used by entities or individuals outside the organizations for their goods or services to certify the origin, material, mode of manufacture, quality or other characteristics of the goods or services.
Provisions in the following text concerning trademarks for goods will also apply to service marks.
Registered Trademark & Exclusive Right
A registered trademark can be obtained after being approved and registered by the Trademark Office through the registration application procedures.
The right holder and the registrant of the registered mark have the exclusive right to use the registered trademark as approved for the goods/services approved to register, which is protected by law.
The exclusive right to use a registered trademark shall be valid for a term of ten years starting from the date of registration, and can be renewed for another ten years before the expiry of the term.
How to Obtain a Registered Trademark
To obtain a registration of a trademark on designated goods or services and seek a protection by law, the owner of the trademark should file a registration application before the Trademark Office of the China National Intellectual Property Administration.
Please see “Outline of CN Trademark System_Basics I_Registering a Trademark” for the details.
What shall bear a Registered Trademark
Cigarettes, cigars, packaged tobacco, electronic cigarettes and other new tobacco products must be produced or sold with an approved registered trademark.
Without an approved registered trademark, such goods may not be produced or sold.
Can a non-Registered Mark be used
Generally a non-registered mark can be used for most goods or services in business activities of an entity or individual, as long as the use is in compliance with the relevant regulations.
However, a non-registered mark shall not use on those goods that must bear a registered trademark.
Special Protection of a non-Registered Mark
The owner of non-registered mark has no exclusive right to use the mark.
However, in special circumstances where a trademark is well-known, a non-registered trademark is also protected to a certain extent.
Well-known Trademark
A well-known trademark is a trademark that is well-known to the relevant public in China.
The relevant public includes consumers who are related to a certain type of goods or services indicated with the trademark, other operators who produce the aforementioned goods or provide services, and sellers and related personnel involved in the distribution channels.
A holder of a trademark that is well known to the relative public may request the protection of the well-known trademark in accordance with the related regulations, if it/he believes that its/his rights are infringed.
Special Protection of Well-known Trademark
Prohibited from Use
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark (or the main part thereof) that has not been registered in China, and the use of the trademark on identical or similar goods is likely to cause confusion, this trademark shall be prohibited from use.
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark (or the main part thereof) that has been registered in China, and the use of the trademark on non-identical or dissimilar goods misleads the public and is likely to create prejudice to the interests of the well-known mark registrant, this trademark shall be prohibited from use.
Not Registerable
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark that has not been registered in China, and the registration of the trademark on identical or similar goods is likely to cause confusion, this trademark shall not be registered.
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark that has been registered in China, and the registration of the trademark on non-identical or dissimilar goods misleads the public and is likely to create prejudice to the interests of the well-known mark registrant, this trademark shall not be registered.
Opposition
Where a prior right owner or any interested party believes that a preliminarily approved trademark application violates the regulations related to registered or non-registered well-known marks, the owner or party may file an opposition against the preliminarily approved trademark within three months from the date of publication of the preliminarily approved trademark.
Invalidation
Where a prior right owner or any interested party believes that a registered trademark violates the regulations related to registered or non-registered well-known marks, the owner or party may request the Trademark Office to declare the registered trademark invalid within five years from the date of trademark registration; however, the owner of a well-known trademark is not subject to the five-year time limit for malicious registration.
When determining whether the owner of the disputed trademark has registered other’s well-known trademark in bad faith, the court shall comprehensively consider the reputation of the cited well-known mark, the reason for the applicant of the disputed trademark to file the application for the disputed mark, and the detailed use situation of the disputed mark to judge its subjective intention. In the event that the cited well-known mark enjoys a high reputation, and the applicant filed the disputed mark for no justified reason, the court may presume that the disputed mark constitutes the registration in bad faith.
Protection request
If a trademark holder requests protection of a well-known trademark in accordance with the provisions of the Trademark Law, he may file a request with the Trademark Office or relevant administrative authorities.
If a trademark holder requests protection of a well-known trademark in civil and administrative trademark cases in accordance with the related provisions, he may file a request with the relevant court.
When a trademark holder requests for protection of a well-known trademark, he shall submit evidence that his trademark constitutes a well-known trademark.
Determination of a Well-known Mark
Whether a trademark is well-known needs to be determined through legal procedures. A well-known trademark shall, upon the request of the parties concerned, be determined as a fact that needs to be determined in handling trademark cases.
The Trademark Office is responsible for determining well-known trademarks in the process of trademark registration examination, trademark dispute resolution and administrative authority investigation and handling of trademark violations based on the request of the parties concerned and the needs to examine and handle cases.
Determination rule
The determination of well-known trademarks follows the principle of case-by-case determination and passive protection.
When to determine
In the examination of the trademark registration or investigation and prosecution of the trademark violation case, where the party concerned requests protection of a well-known trademark pursuant to the related provisions, the Trademark Office may determine whether a trademark is well known or not according to the needs to examine or prosecute a trademark related case.
When handling a trademark disputed case, where the party concerned requests protection of a well-known trademark pursuant to the Trademark Law, the Trademark Office may determine whether a trademark is well known or not according to the needs to handle the case.
In trial of a trademark civil or administrative case, where the party concerned requests protection of a well-known trademark pursuant to the related provisions of the Trademark Law, the court designated by the Supreme People’s Court may determine whether a trademark is well known or not according to the needs to try the case.
In the following civil dispute cases, where the party concerned uses the trademark being well-known as a factual basis, the court may determine whether the trademark is well known or not if the court believes that it is necessary according to the specific situation of the case:
(i) a trademark infringement lawsuit filed on the ground of violating provisions of the Trademark Law related to well-known trademarks;
(ii) a trademark infringement lawsuit or anti-unfair competition lawsuit filed on the ground that the trade name at issue is identical with or similar to a well-known trademark;
(iii) a trademark infringement lawsuit in which the defendant makes defense or counterclaims on the ground that the plaintiff’s registered trademark is a reproduction, an imitation, or a translation of their prior well-known trademark not registered in China.
Factors for the determination
A well-known trademark shall be determined upon considering the following factors:
(1) reputation of the trademark in the relevant sector of the public;
(2) duration of use of the trademark;
(3) duration, extent, and geographical scope of any publicity for the trademark;
(4) history of protection of the trademark as a well-known trademark; and
(5) other factors contributing to the reputation of the trademark.
The party concerned that claims their trademark being well-known shall submit the following evidence in accordance with the case situation for proving that their trademark had been well-known when the accused trademark infringement or unfair competition behavior occurred:
(a) market share, sales region, and profit and tax of goods bearing the trademark;
(b) duration of the use of the trademark;
(c) approach, duration, extent, financial investment and geographical scope of any publicity or promotion for the trademark;
(d) history of protection of the trademark as a well-known trademark; and
(e) market reputation enjoyed by the trademark
(f) other factors proving that the trademark had been well-known.
The duration, scope and approach of the use of the trademark may include the use of the trademark before it is approved for registration.
Materials on the duration of trademark use may include such materials on the history and scope of the use and registration of the trademark. If the trademark is an unregistered trademark, materials proving that it has been in use for at least five years shall be provided. If the trademark is a registered trademark, materials proving that it has been registered for at least three years or has been in continuous use for at least five years shall be provided. Herein three years or five years refer to the three or five years before the date of the request to oppose the trademark registration application or declare it invalid, and the three or five years before the date of the request for protection of well-known trademark in the investigation and handling of trademark infringement cases.
Promotional/promotional materials may include such materials on the advertising/promotional activities, geographical scope, types of publicity media, and advertising volume in the past three years.
Other evidence materials proving that the trademark is well-known, may include the sales revenue, market share, net profit, tax amount, sales area, etc. of the main products using the trademark in the past three years.
The evidence of the duration of the use of the trademark, market rankings, market investigation reports, market value evaluation reports, and the history of the trademark being deemed well-known, shall be objectively and comprehensively examined combining with other evidence for determining whether the trademark is well-known.
The determination of the protection scope of a well-known trademark may comprehensively take into account this trademark's distinctiveness, fame, the similar degree of signs of the trademarks, the details of goods designed, the degree of overlap and attention of the relevant public, the subjective state of the applicants of the trademark at issue and other factors
Determination without opposition
Where before the accused trademark infringement or unfair competition behavior occurred the trademark had been determined well-known by a court or an administrative authority, and the defendant does not oppose the fact of the trademark being well-known, the court shall determine the trademark well-known. Where the defendant raises the opposition, the plaintiff shall still bear the burden of proof for proving the trademark is well-known.
As for a trademark that is familiar to the relevant public in China, where the plaintiff has provided basic evidence for proving its trademark is well-known or the defendant has no opposition, the court shall determine the fact that the trademark is well-known.
Where a party requests protection for a well-known trademark that has been determined by the administrative authority or the court, and the other party does not object to the well-known status of the trademark involved, the court will not examine this matter. If an objection is raised, the court will examine this matter in accordance with the provisions of the Trademark Law related to the determination of well-known trademarks.
Likelihood of Confusion
Where the relevant public is likely to be misled on the origin of goods bearing a well-known trademark and the accused mark, or to be misled to believe that the business operators of the well-known trademark and the accused mark has a licensing relationship, affiliated relationship, or other specific relationship, this belongs to the situation of being likely to cause confusion prescribed by provisions of the Trademark Law related to the protection of well-known trademarks that are not registered in China.
Where a party claims that the disputed trademark constitutes a reproduction, imitation or translation of its unregistered well-known trademark and should not be registered or should be invalidated, the court shall comprehensively consider the following factors and the interaction between the factors to determine whether it is likely to cause confusion:
(1) The degree of similarity of the trademark signs;
(2) The degree of similarity of the goods;
(3) The distinctiveness and fame of the trademark for which protection is sought;
(4) The degree of attention of the relevant public;
(5) Other relevant factors.
The subjective intention of the trademark applicant and evidence of actual confusion can be used as reference factors in determining the likelihood of confusion.
Misleading and damage
Where the accused trademark is liable to mislead the public to believe that the accused mark has some certain connection to a well-known trademark, which could weaken the distinctiveness of the well-known trademark, undermine the market reputation of the well-known trademark, or take advantage of market reputation of the well-known trademark via unfair means, it constitutes the situation of misleading the relevant public prescribed by provisions of the Trademark Law relevant to the protection of well-known trademarks registered in China and may damage the rights and interests of the trademark registrant.
Where a party claims that the disputed trademark constitutes a reproduction, imitation or translation of its registered well-known trademark and should not be registered or should be invalidated, the court shall comprehensively consider the following factors to determine whether the use of the disputed trademark is sufficient to make the relevant public believe that it has a considerable connection with the well-known trademark, thereby misleading the public and causing possible damage to the interests of the well-known trademark registrant:
(1) The distinctiveness and fame of the cited trademark;
(2) Whether the trademark signs are sufficiently similar;
(3) The designated goods;
(4) The degree of overlap and attention of the relevant public;
(5) The legal use of signs similar to the cited trademark by other market entities or other relevant factors.
Consideration for prohibited use
Where the plaintiff requests to prohibit the use of a trademark or a company name identical with or similar to their registered well-known trademark on goods not similar to their goods, the court will make the judgment based on the case situation and comprehensively consideration of the following factors:
(a) the distinctiveness of the well-known trademark;
(b) the recognition of the well-known trademark in the relevant public that uses goods bearing the accused trademark or company name;
(c) the correlation relationship between the goods bearing the well-known trademark and those using the accused trademark or company name.
(d) other relevant factors.
Protection of Well-known Trademark
Administrative authorities at all levels should strengthen the protection of well-known trademarks in the work of trademark registration and management, and safeguard the legitimate rights and interests of right holders and consumers. Where trademark violations are suspected of crimes, the case should be timely transferred to the judicial authorities.
Reproducing, imitating, or translating another's registered well-known trademark or their main parts and using it as trademark on non-identical or dissimilar goods, thereby misleading the public, and causing possible damage to the interests of the well-known trademark registrant, shall be infringement of the exclusive right to use registered trademarks.
Reproducing, imitating, translating another's well-known trademark that are not registered in China or their main parts, and using it as trademark on the same or similar goods, thereby being likely to cause confusion, shall bear civil legal liability for ceasing the infringement.
Where the use of the registered trademark by the defendant violates the provisions of the Trademark Law related to the protection of well-known trademarks for reproduction, imitation or translation of a well-known trademark of the plaintiff, constituting trademark infringement, the court shall prohibit the use of the trademark by the defendant upon the plaintiff’s requests. However if the registered trademark of the defendant belongs to any of the following situations, the court will not support the request of the plaintiff:
(i) the statutory term for requesting invalidation has lapsed;
(ii) the plaintiff’s trademark was not well-known when the defendant applied for trademark registration.
Where the trademark holder requests protection of a well-known trademark in accordance with the Trademark Law to the administrative authority, if the Trademark Office determines the trademark to be well-known, the administrative authority shall order to cease the trademark use that violates the provisions of the Trademark Law, confiscate and destroy relevant trademark signs. If the trademark signs are inseparable from the associated goods, the signs shall be confiscated and destroyed together.
If another's registered trademark or unregistered well-known trademark is used as the name of a company to mislead the public, constituting unfair competition, the Anti-Unfair Competition Law will be applicable.
Prohibition of illegal use of the term “well-known trademark”
Producers and operators shall not use the wording “Well-known Trademark” on goods and packages or containers of goods, or in advertisements, exhibitions and other business activities.
Where any party violates the provision of the Trademark Law to use the words “well-known trademark” on goods, packages or containers of the goods, or use the words in advertising, exhibition or any other business activities, the local intellectual property bureau shall order the party to make correction and impose a fine of CNY100,000.
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