Current Status of Trademark Right Protection in China
China has made the newest amendment to its trademark law, which came into force on 1 May 2014. Meanwhile, relevant implement rules have been constantly updated. For example, you can apply for registration of the same trademark on multiple classes of goods in the same application, while an applicant shall submit an application for each class in the past. Furthermore, the stage of examination as to substance will take no more than 9 months to complete, while the whole registration procedure usually takes about one year to complete, which is a marked improvement over the 15 months or more required in the past. It can be said that the current level of protection of trademark right in China conforms to international standard.
Registered Trademark and Unregistered Trademark
According to the Trademark Law, a trademark is a mark, including any text, graph, alphabetic letter, number, three-dimensional symbol, color combination, sound or any combination thereof, which is able to distinguish the goods or services of a natural person, legal person or other organization from those of others.
Trademarks that are registered upon verification and approval of the Trademark Office are registered trademarks, including commodity trademarks, service marks, collective marks, and certification marks.
Trademark used on goods are commodity trademarks. For example, the “Rejoice” trademark for “shampoo”. Trademarks used in respect of services are service marks. For example, the “McDonald’s” trademark for “fast food restaurant”.
“Collective marks” refer to signs that have been registered in the name of groups, associations or other organizations and which are intended to be used by members of such organizations in commercial activities to indicate the organization membership of users. For example, the trademark registered for goods such as “watches and clocks”.
“Certification marks” are signs that are controlled by organizations having the capacity for supervision over certain goods or services and which are used by organizations or individuals other than such organizations on goods or services to certify the origin, raw materials, manufacturing method, quality, or other characteristics of such goods or services. For example, the “Q mark” registered for services such as “tour arrangement”.
In China, although companies may use an unregistered mark (provided it does not infringe other people’s lawful rights), the exclusive right to use the trademark is only entitled to those trademark registrants. In other words, only the owner of a registered mark has the right to request the relevant administrative or judicial authorities to stop unauthorized use of the trademark by others.
For unregistered marks, only those which have gained a fairly high degree of reputation in China may be afforded some protection by virtue of provisions on well-known marks in the Trademark Law or the provisions in the Anti-Unfair Competition Law. For instance, the trademark of Sotheby’s is not registered in China, but the Chinese court has held that the trademark “Sotheby” is an unregistered well-known mark and trade name. Thus, Sichuan Su Fu Bi Auction Company Limited was found to have committed trademark infringment and unfair competition because “Su Fu Bi” in Chinese represents the same characters as used by Sotheby’s.
Trademark Registration in China
To obtain the exclusive right to use a trademark, you shall apply for trademark registration with the Trademark Office in China, and then must follow the relevant application procedures as stipulated in the Trademark Law. The current Trademark Law, which came into effect on 1 May 2014 is the third amended version of the Trademark Law 1982 made on 30 August 2013.
The “First-to-File” Principle
The “first-to-file” principle means that if two or more applicants apply for registration of the same or a similar trademark for use on the same or similar goods or services, the trademark application that is filed first will be preliminarily approved, accompanied by a publication thereon. Therefore, the sooner the application is filed, the more likely the applicant will get protection of his trademark.
Since the Trademark Law adopts the “first-to-file” instead of the “first-to-use” principle, in normal circumstances, the mere use of a trademark without registration does not form the basis of objecting to others using or registering it. In other words, protection only comes with registration. The use of a trademark which has not yet been registered at the Trademark Office may on the one hand constitute infringement of the exclusive rights to use the trademark registered by another person, and on the other hand, the protection of one’s own rights may be delayed or prejudiced.
However, as a supplement to the “first-to-file” principle, if the applications are filed on the same day, the trademark that is used first will be preliminarily approved, accompanied by a publication thereon, and the application(s) of the other application(s) will be rejected and no publication will be made.
Moreover, if an unregistered trademark in China has attained a certain degree of influence or popularity through use, it can enjoy a limited degree of protection. In particular, for well-known trademarks which have not yet been registered in China, the Trademark Law confers special protection on them. However, the threshold for recognizing a trademark as being well-known is very high, only be recognized as a fact that needs to be ascertained in the handling of a trademark-related case.
To put it simply, any natural person, legal person or other organization that need to obtain the exclusive right to use a trademark for its goods or services shall apply for trademark registration with the Trademark Office. And two or more natural persons, legal persons, or other organizations may jointly file a registration application for the same trademark with the Trademark Office and jointly enjoy and exercise the exclusive right to use the trademark.
However, a foreigner or foreign enterprise, who does not have a habitual residence or business premises within China, shall entrust a duly-established trademark agency to act as its agent for applying for trademark registration and handling other trademark-related matters in China.
Grounds for Trademark Registration
In summary, the grounds for trademark registration can be classified into absolute grounds and relative grounds. Absolute grounds refer to the inherent non-prohibitiveness and distinctiveness of a trademark, whereas relative grounds mean that a trademark should not be conflict with the legal rights obtained earlier by other persons.
The non-prohibitiveness of a trademark means that the trademark itself should not be a sign prohibited by the Trademark Law, such as signs concerning national sovereignty, international relationship and public interest. Such signs cannot be used or registered as trademarks.
According to the Article 9 of the Trademark Law, a trademark for which a registration application is made shall have distinctive features and be easily distinguishable. This attribute is in fact the basic function of a trademark, which serves to distinguish the origin of the goods or services concerned.
In accordance with Article 11, the following signs shall not be registered as trademarks:
(1) Those consisting only of generic names, devices, or model numbers of the goods concerned;
(2) Those consisting only of a direct representation of the quality, primary raw materials, functions, intended purposes, weight, quantity, or other characteristics of the goods concerned;
(3) Those otherwise lacking distinctive features.
However, the distinctiveness of a sign is not absolute. A sign which was originally not distinctive may later be registered as a trademark after it has acquired prominent characteristics and become easily distinguishable through use.
3. Non-conflicting trademark
A trademark is non-conflicting if it is not in conflict with the pre-existing lawful rights of others. Prior rights include trademark rights, copyright, design patent rights, trade name rights, rights of person names, and portrait rights.
Non-conflicting trademarks can be trademarks not in conflict with another’s trademark that has been registered or preliminarily approved for use on the same or similar goods, and trademarks not in conflict with other prior rights.
(1) Trademark not in conflict with another’s trademark
To confirm the non-conflict between trademarks is in fact to determine whether the respective trademarks and goods or services are identical or similar.
“Identical trademark” means when comparing the accused infringing mark and prior mark, the two marks do not have much difference in visual appearance.
“Similar trademark” refers to the two marks of which the appearance, pronunciation, meaning of the word(s), or the design and color of the device, or the overall appearance of the combination of the above elements is similar, or the three-dimensional shape or the combination of colors is similar to such a degree that the relative public are likely to mistake the original source of the goods for which the marks are applied and think there is certain association between the source of the goods for which the accused infringing mark is used and the goods for which the prior mark is used.
Identical goods or services
“Identical goods (services)” refer to the goods (services) which share a same name or whose content refer to the same thing, though their names are different.
Similar goods or services
“Similar goods” mean goods that are identical in function, usage, and that belong to the same industry, that are sold through the same sales channel(s) and are aimed at the same group of consumers; or the relative public tend to think the goods are associated with each other and thus are likely to cause confusion. “Similar services” refer to services that are identical with each other in purpose, content, way of serving and target consumers, and are apt to lead the relative public to think the services are associated with each other and thus are likely to cause confusion.
Goods and services are similar
“Goods and services are similar” means that the goods and services are associated with each other and thus are likely to cause confusion.
In the event of such conflict, the conflict should be resolved in accordance with the “first-to-file” principle, i.e. approval will be granted to the trademark the application of which is filed first, while subsequent applications for registration by other people will be rejected.
(2) Trademarks not in conflict with other person’s prior-acquired legitimate rights.
When it comes to trademarks in conflict with other person’s prior-acquired legitimate rights, it shall be resolved in accordance with the “good faith” principle, i.e. the application for trademark registration shall not be allowed to harm other person’s prior rights, and no preemptive application by any unfair means of a trademark which has been used by another person and has a certain influence shall be allowed for registration.
For example, where an agent or representative registers, in its own name, a trademark of one of its principals without authorization, and the principal opposes the registration, the trademark shall not be registered and shall be prohibited from use.
Filing an Application for Registration
When an applicant applies for registration, he shall indicate on the application the class of goods and the names of goods for which the trademark is to be used pursuant to the prescribed schedule of classification of goods.
In order to make the procedure for registration convenient for the applicants, they are allowed to apply for registration of the same trademark on multiple classes of goods in the same application in accordance with the amended Trademark Law.
Meanwhile, an application may be submitted via electronic means other than in writing to cater for the general trend of online applications and online examinations.
Examination and Approval
Under the current trademark examination process, an application for trademark registration which is in conformity with China’s Trademark Law will have to go through the following procedures before approval is granted:
(Examination → as to substance → Publication → Registration
as to form)
1 month 9 months 3 months
Examination as to Form
At the stage of examination as to form, the Trademark Office would check if all the application materials are submitted, if the application documents are completed as required, and whether the fees are paid.
If it is found that the application is not in order, a Rejection Notification will be issued. If the application is basically in order, but any supplement or correction is needed, an Amendment Notification will be issued, requiring the applicant to make the designated supplement or correction and send the supplemented or corrected application documents back to the Trademark Office within 30 days of receipt of the notice. If all the procedural requirements are satisfied, the Trademark Office will issue an Acceptance Notification in about 1 month from the date of application. And the date of application for trademark registration shall be the day when the Trademark Office receives the application documents.
Examination as to Substance
At the stage of examination as to substance, the Trademark Office would, according to the Trademark Law and its Regulation, examine whether the application is in conformity with the prescribed requirements.
According to the Article 28 of the Trademark Law, the Trademark Office shall complete the examination of a trademark under registration application within nine months upon receipt of the documents for trademark registration application.
An initial approval will be granted to the application and be published if the application meets the prescribed requirements or if the application only meets the prescribed requirements for registration of the trademark on a part of the designated goods.
When the Trademark Office refuses an application for trademark registration on a part of the designated goods, the applicant may file a divisional application for the part which has been granted initial approval, and the date of application of the divisional application shall be the same as that of the present application. If necessary, the applicant shall file an application for division with the Trademark Office within 15 days of receipt of the Notice on Partial Refusal of a Trademark Registration Application.
Publication and Registration
After preliminary approval is granted, the application for trademark registration will be published. If there is no opposition against the application within 3 months from the date of publication, approval for registration of the trademark will be granted by the Trademark Office, a certificate of trademark registration will be issued, and an announcement will be made thereon.
Quite often in practice, it takes a much longer time to register due to refusal by the Trademark Office or opposition by a holder of prior rights or an interested party.
Assessing the likelihood of obtaining trademark registration
As it may take quite a long time before an applicant finds out whether his trademark can be registered, it is advisable for him to seek professional opinion on the likelihood of obtaining registration for his mark. In China, there are law firms or trademark agencies which are specialized in providing these services, assisting people in applying for trademark registration. Furthermore, as part of their job, law firms or trademark agencies also provide professional opinion on the registration of the trademark. Apart from advising on whether a trademark satisfies the absolute grounds for registration, they also conduct trademark searches at the Trademark Office in order to ascertain whether there are any conflicting trademarks.
The Use of Registered Trademarks in China
The exclusive right to use a registered trademark is limited to the trademark registered upon verification and approval and the goods or services approved to be designated in the certificate.
It is only by use of the registered trademark on the goods or services approved that the exclusive right of the trademark registrant is guaranteed and that no conflict with the right of other people may arise. Where a registered trademark has not been in use for three consecutive years without justification, any entity or individual may apply to the Trademark Office for cancellation of the registered trademark.
Where the use of a registered trademark violates the relevant provisions of the Trademark Law regarding its use, the Trademark Office can cancel the registered trademark. According to the Article 49, a trademark registrant that changes, without authorization, the registered trademark, the name or address of the registrant or other registration items during the use of the registered trademark shall be ordered to make correction within the prescribed time period by the relevant local administration for industry and commerce, and shall have its registered trademark cancelled by the Trademark Office if it fails to make correction by the prescribed deadline.
The purpose of such cancellation provisions in the Trademark Law is, on the one hand, to impose use obligations upon the registered trademark owner and, on the other, to restrict the manner of use of his registered trademark, so as to ensure that the registered trademark is capable of identifying and distinguishing the source of the owner’s goods or services from those of others, thus protecting the interests of other trademark owners and the public.
The Validity Period of a Registered Trademark
The validity period of a registered trademark is 10 years, commencing from the date of registration approval.
Where the registrant intends to continue to use the registered trademark after the expiration of the validity period, an application for renewal of the registration should be filed with the Trademark Office within 12 months before the said expiration, failing which a grace of period of 6 months may be granted.
Each renewal of registration shall be valid for 10 years, commencing from the date immediately following the date of expiry of the last validity period of the trademark. The registrant may renew the trademark registration for an unlimited number of times. After examination and approval of the renewal application, the Trademark Office will issue the relevant certificate and make a publication.
NOTICE: The material contained herein is in the nature of general comment and information ONLY and neither purports, nor is intended, to be advising on any particular matter. Readers should not act or rely upon any matter or information contained in or implied by the publication without taking appropriate professional advice.