1. Basic Trademark Knowledge

Q 1: Can trademarks registered or used abroad be directly protected in China?

A: Like patents, trademark protection is regionally limited and trademarks that are only registered or used abroad cannot be directly protected in China.

China adopts a trademark rights protection system that recognizes acquisition of rights through registration primarily, and through actual use secondarily. Registered and unregistered well-known trademarks in China may be protected by the Trademark Law; unregistered trademarks that have gained certain recognition through use may seek the protection of the Anti-Unfair Competition Law.

As China adopts the registration-based acquisition system, applicants for trademark registration in China are not required to use the trademarks before application or have intention to use them.

Q 2: How many types of registered trademarks are there in China? Which elements can be used to apply for registered trademarks?

A: The registered trademarks include goods marks, service marks, collective marks, and certification marks.

Any mark capable of distinguishing the goods of a natural person, legal person or other organization from that of any other person, including word, graphic, letter, number, three-dimensional sign, color combination, sound and the like, and combination of the above elements, may be applied for trademark registration.

Q 3: What are the ways to apply for Chinese registered trademarks? Which language must be used?

A: Where a Chinese natural person, legal person or other organization, in its production and management activities, needs to acquire the exclusive right to use a registered trademark for its goods or services, it may directly or entrust a trademark agency to apply to the China National Intellectual Property Administration (CNIPA) for the registration of the trademark.

A foreigner or foreign enterprise without habitual residence or business office in China shall entrust a Chinese trademark agency to apply for registered trademarks with CNIPA or designate the country “China” through the Madrid System for the International Registration of Marks.

The Chinese language shall be used in the application for trademark registration or other trademark matters.

If certificates, certification documents and evidentiary materials submitted in accordance with the provisions of the Trademark Law and the Regulations on the Implementation of the Trademark Law are written in a foreign language, the Chinese translation shall be attached; if not attached, the certificates, certification documents and evidentiary materials shall be deemed to have not been submitted.

Q 4: Which goods must acquire registered trademarks in China?

A: For goods that must use a registered trademark as stipulated by laws and administrative regulations, trademark registration must be applied; the goods may not be sold on the market before the registration thereof is approved.

According to Article 19 of the Law of the People's Republic of China on Tobacco Monopoly, a trademark registration must be applied for cigarettes, cigars and packaged cut tobacco; the goods may not be produced or sold before the registration thereof is approved.

2. Application for Trademark Registration

Q 5: What documents need to be submitted for trademark registration in China?

A: (1) Application for registration;

(2) Power of attorney;

(3) Identification documents (business license, business registration certificate, etc.);

(4) Trademark pattern, designated goods or service for use;

(5) When the applicant claims priority, documents certifying priority shall also be submitted;

Where an applicant files an application for trademark registration in China within 6 months of filing the first application for registering the same trademark for the same goods in a foreign country, it may have priority in accordance with any agreement concluded between the People's Republic of China and the foreign country concerned, or with the international treaty to which both countries are parties, or on the basis of the principle of mutual recognition of priority.

An applicant claiming priority in accordance with the preceding paragraph shall state in writing at the time of filing the registration application and shall submit a copy of the first-filed registration application within 3 months. An applicant who neither claims priority in writing nor submits a copy of the said application shall be deemed as not claiming priority.

In the event an applicant uses a trademark for the first time on the goods displayed at an international exhibition organized or recognized by the Chinese Government, the applicant may be entitled to priority within 6 months from the date of the exhibition.

An applicant claiming priority in accordance with the preceding paragraph shall state in writing at the time of filing the registration application and shall submit the name of the exhibition, evidence showing the use of the trademark on the goods displayed, documents validating the date of the exhibition, etc. within 3 months. An applicant who neither claims priority in writing nor submits the supporting documents in time shall be deemed as not claiming priority.

Q 6: Can a registration application for several classes of goods be submitted in China?

A: An applicant may apply for registering a trademark for one class of goods, or for several classes of goods. The official trademark fee is calculated based on the number of classes of goods involved. The fee for applications for three classes of goods submitted with one trademark for one class is the same as that for the applications for three classes of goods sharing the same trademark.

Q 7: Is the Nice Classification applicable to the goods designated for use in Chinese trademark registration applications?

A: Based on the Nice Classification, China formulated the Table for Differentiating Similar Goods and Services.

Q 8: Which signs may not be used as trademarks?

A: (1) Those identical with or similar to the national name, national flag, national emblem, national anthem, military flag, military emblem, military song, medals, etc. of the People's Republic of China, and those identical with the name or symbol of a central state organ, as well as the name of a specific place or the name or figure of a landmark building in the area;

(2) Those identical with or similar to the national name, national flag, national emblem, military flag, etc. of any foreign country, except with the consent of the government of that country;

(3) Those identical with or similar to the name, flag, emblem, etc. of any intergovernmental international organization, except with the consent of that organization or those that do not easily mislead the public;

(4) Those identical with or similar to official marks or inspection marks indicating control or guarantee, except as authorized;

(5) Those identical with or similar to the name or symbol of the Red Cross or the Red Crescent;

(6) Those having the nature of discrimination against any nationality;

(7) Those deceptive that easily mislead the public in the features such as the quality of goods, or place of origin;

(8) Those detrimental to socialist morals or customs, or having other harmful influences.

Q 9: How to determine a trademark with several meanings has adverse effects? Can the exclusive right to use be granted to a trademark with adverse effects through use?

A: If a trademark has several meanings, one of which has adverse effects, the trademark shall be identified as having adverse effects, and may not be used as a trademark.

Even if a trademark identified as having adverse effects is approved for registration and achieves higher recognition or even becomes a well-known trademark through use, it cannot obtain the legitimacy of registration.

Q 10: Which signs may not be registered as trademarks due to lack of distinctive features?

A: (1) Those having the generic name, pattern or model of goods only;

(2) Those directly expressing the quality, main raw materials, functions, purposes, weight, quantity and other characteristics of goods only;

(3) Those lacking other distinctive features.

Any sign listed in the preceding paragraph may be registered as a trademark if, through use, it has acquired distinctive features and is readily distinguishable.

Q 11: How to judge whether a trademark applied for registration is distinctive?

A: The examination to determine whether a trademark has distinctive features shall be based on the general knowledge of the relevant public as users of the goods specified for the trademark, and the trademark shall be judged as a whole. If a trademark contains descriptive elements but does not affect its overall distinctive features, or if the descriptive sign is expressed in a unique way and the relevant public can identify the source of the goods, it shall be deemed to have distinctive features.

Q 12: What problems may exist in the registration of geographic names as trademarks?

A: The geographic names of administrative divisions at or above the county level or foreign geographic names known to the public shall not be registered if they lack distinctiveness when used on the goods derived from the name of the locality, and if they are easily mistaken for another when used on the goods not derived from the name of the locality,

with exception of the geographic names having other meanings or used as parts of collective marks or certification marks. Registered trademarks in which geographic names are used shall remain valid.

Q 13: What problems may exist in applying for registered trademarks of three-dimensional signs?

A: Three-dimensional shapes that are generated solely by the properties of goods themselves, three-dimensional shapes of goods that are needed for technical effects, or three-dimensional shapes that provide substantial value to goods may not be registered because of their functionality and lack of distinctiveness.

Originality is identified by the provisions in the field of the Copyright Law, which is not equal to distinctiveness, and cannot be directly used in the field of the Trademark Law. Three-dimensional signs with high originality or those first invented by the applicant do not necessarily have distinctiveness. Three-dimensional signs need to be significantly separated from the goods themselves and distinctive enough from the generic signs or shapes of goods so that the source of goods can be distinguished.

Q 14: Are the applications for trademark registration in China examined in substance? Pre-objection or post-objection?

A: In examination as to substance, the examiner examines not only the absolute grounds, but also the relative grounds, that is, whether the applied trademarks are identical with or similar to the trademarks already registered or preliminarily approved by others on the same or similar goods.

The case where objection procedure is conducted before the registration procedure falls within pre-objection. If no ground for rejection is found after examination, CNIPA shall make a public announcement of preliminary examination and approval. The objection period shall be 3 months from the date of the public announcement, during which the relevant personnel may file an objection. Where there is no objection till the expiration of the objection period for the public announcement, the trademark registration shall be approved and a trademark registration certificate issued.

Q 15: What are the restrictions on the renewal of trademark registration?

A: Trademark registration applications shall be examined on a case-by-case basis. After an earlier trademark of the applicant is registered and before the trademark is re-applied, where another person has registered a trademark identical with or similar to the re-applied trademark on the same or similar goods, continuously used it and generated a certain degree of recognition, and where the applicant for the re-application of trademark cannot prove such earlier trademark has been used or the recognition has been generated through the use of the trademark, and the relevant public is not likely to be confused, the claim by the applicant for the re-application that the new application shall be registered may be unassisted.

Examination practices demonstrate that renewal of registration is generally not permitted.

3. Exclusive Right to Use a Registered Trademark

Q 16: During the initial period of the exclusive right to use a registered trademark, can the right owner claim compensation from another person for using the trademark in the objection procedure?

A: The exclusive right to use a registered trademark shall be enjoyed since the date of registration, but not within the period of public announcement.

Where the objection is not established after examination and the trademark registration is granted, the time for the trademark registration applicant to obtain the exclusive right to use the trademark shall be counted from the date of the expiration of 3 months of the preliminary examination and approval announcement. From the date of expiration of the public announcement of the trademark to the date before the decision to grant registration is made, the use by others of the same or similar trademark on the same class of goods or similar goods shall not be retroactive; however, any loss caused to the trademark registrant by the malicious intent of the user shall be compensated.

Q 17: What is the scope of the exclusive right to use a registered trademark?

A: The application of the exclusive right to use a trademark is limited to a trademark that has been approved for registration and to goods on which the use of the trademark has been approved.

Where the exclusive right to use a registered trademark needs to be obtained for goods beyond the scope of approved use, a separate application for registration shall be filed. Where the sign of a registered trademark needs to be changed, a new application for registration shall be filed.

Q 18: How long is the validity period of a registered trademark? When can one apply for renewal?

A: The term of validity of a registered trademark shall be 10 years, counted from the date of approval of the registration. The trademark registrant shall renew the registration within 12 months prior to the expiration of the trademark term. If the registrant fails to do so within this period, a 6-month extension may be granted. Each renewal of registration shall be valid for 10 years and may be renewed for an unlimited number of times.

Q 19: Can a registered trademark be assigned?

A: A trademark in application and a trademark that has been approved for registration can be assigned. An application for assignment shall be filed with CNIPA and the assignment of a registered trademark shall be publicly announced after it has been approved. The assignee shall enjoy the exclusive right to use the trademark from the date of public announcement.

Where a registered trademark is assigned, the trademark registrant shall assign all similar trademarks registered on the same class of goods, or the same or similar trademarks registered on similar goods.

CNIPA does not approve any assignment that is likely to cause confusion or has other adverse effects.

Q 20: Can a registered trademark be licensed to others?

A: Yes. A trademark registrant may, by signing a trademark licensing contract, license others to use its registered trademark. The licensor shall supervise the quality of the goods on which the licensee uses its registered trademark. The licensee shall guarantee the quality of the goods using the registered trademark.

Where another person is licensed to use the registered trademark, the licensor shall report to CNIPA for record, otherwise the trademark may not be used against any bona fide third party.

Q 21: What is trademark use? What is the consequences of not using a registered trademark?

A: According to the Trademark Law, the use of a trademark means such activities as the use of a trademark in goods, goods packaging, containers and goods transaction documents, or the use of a trademark in advertising, exhibitions and other commercial activities to identify the sources of goods.

Where a registered trademark has not been used for 3 consecutive years without justifiable reasons, any entity or individual may apply to CNIPA for cancellation of the registered trademark.

Where the owner of the exclusive right to use a registered trademark claims for compensation, and the accused infringer claims that the right owner did not use the registered trademark, the people’s court may require the owner to provide the evidence of the actual use of the registered trademark within the previous 3 years. Where the owner cannot prove that it has actually used the registered trademark within the previous 3 years or that it has suffered other losses as a result of the infringement, the accused infringer shall not be liable for the compensation.

Q 22: What are the applicable circumstances of the revocation procedure of registered trademarks? What rules shall be followed in the revocation procedure?

A: Where a trademark registrant, in the course of using a registered trademark, changes the registered trademark, the name and address of the registrant or any other register matters on its own, the local market regulators shall order for correction within a time limit; if the registrant fails to make corrections within the time limit, CNIPA shall cancel its registered trademark.

When a registered trademark has become the generic name of the goods it approves for use or stay unused for 3 consecutive years, any entity or individual may apply to CNIPA for revocation of the registered trademark.

Upon receipt of the application for revocation, CNIPA shall notify the registrant and make a decision on revocation or non-revocation of the registered trademark within 9 to 12 months. If any party is not satisfied, it may apply for a review. CNIPA shall make a decision on the review within 9 to 12 months after receiving the application thereof. If any party refuses to accept the decision, it may bring a suit with the Beijing Intellectual Property Court (Beijing IP Court).

Q 23: Does pure export fall within trademark use?

A: Where the goods using the registered trademark are not circulated in China and are directly exported, and if the trademark registrant requests to maintain the registration of the trademark in the revocation procedure by simply exporting, such case may be regarded as the use of the trademark and the registration of the trademark shall be maintained.

4. Procedures Related to Trademark Objection, Invalidation and Rejection Review

Q 24: What are the principles for recognition of well-known trademarks?

A: Well-known trademarks shall be recognized according to demand. CNIPA may, as required by the examination and handling of cases, and the people’s courts appointed by the Supreme People's Court may, as required by the trial of the civil or administrative trademark cases, make a recognition of the popularity of a registered trademark.

Producers and business operators may not use the words “well-known trademark” on goods, packaging or containers of goods, or in advertising, exhibitions or other commercial activities.

Q 25: What extended protection is available for well-known trademarks?

A: Where a trademark applied for registration in respect of the same or similar goods is a reproduction, imitation or translation of another person's well-known trademark which has not been registered in China and is liable to cause confusion, such trademark may not be registered and shall be prohibited from use.

Where a trademark applied for registration in respect of different or other classes of goods is a reproduction, imitation or translation of another person's well-known trademark that has been registered in China, misleading the public and possibly damaging the interests of the registrant of the well-known trademark, such trademark may not be registered and shall be prohibited from use.

If the use of a trademark on the same or similar goods is a reproduction, imitation or translation of a well-known trademark that has not been registered in China, such use constitutes trademark infringement. Regardless of whether the suspected infringement trademark has been registered or not, the owner of the unregistered well-known trademark may bring a lawsuit for trademark infringement.

Q 26: What are the remedies after a trademark registration application is rejected?

A: When the examiner, upon examination, finds that there are absolute or relative grounds that the application for trademark registration shall be rejected, the applicant shall apply for a review within the statutory time limit if it is not satisfied with the examiner's decision. CNIPA shall make a decision on the review within 9 to 12 months upon receipt of the review application. If the applicant is not satisfied with the decision upon review, it shall bring a suit with the Beijing IP Court within the legal time limit.

Q 27: What are the consequences of an agent or representative applying for the trademark of the principal or the represented?

A: When an agent or representative registers the trademark of the principal or the represented in its own name without authorization, and the principal or the represented raises an objection, the registration may not be granted and the use of the trademark shall be prohibited.

Where a trademark applied for registration in respect of the same or similar goods is identical with or similar to an unregistered trademark previously used by another person, and the applicant is aware of the existence of the trademark of another person through contractual, business or other relations other than those provided in the preceding paragraph, such registration may not be granted if such person raises an objection.

Q 28: What are the consequences of the conflict between applying for a trademark and the prior rights of others?

A: An application for trademark registration may not impair the prior rights of others, nor shall it register by illegitimate means an unregistered trademark which has been used by others and has certain influence. Otherwise, the relevant right holder may cancel the registration through the objection procedure or the invalidation procedure.

Q 29: What are the differences between prior name rights and deceased well-known figures protection?

A: Prior name rights refer to name rights enjoyed by living natural persons.

When a trademark or its constituent elements are identical with or similar to the name, portrait, etc. of a famous deceased person in a particular industry or region, and thus lead to the public's misperception of the quality, reputation, craftsmanship and other characteristics of the goods or services designated for use of the trademark, such trademark may be deemed fraudulent and its registration may not be granted.

When a trademark or its constituent elements are identical with or similar to the name, portrait, etc. of deceased political, economic, cultural, religious, ethnic and other public figures, which may have a negative impact on our social public interests and public order, the influence may be deemed as “other adverse impact” and the registration of the trademark may not be granted.

Q 30: What are the provisions on the objection procedure of trademark registration applications?

A: If the examiner, upon examination, does not find any ground that an application for trademark may not be registered, he/she shall make a public announcement of the preliminary examination and approval of the applied trademark for a period of 3 months. Any prior right holder or interested party may raise an objection if it considers that there are relative grounds that a trademark that has been preliminarily approved may not be registered; any person may raise an objection to CNIPA if he/she finds that there are absolute grounds that a trademark that has been preliminarily approved may not be registered.

The examiner shall hear the facts and reasons stated by the opponent and the person against whom the objection is filed, and, after investigation and verification, make a decision on whether to grant registration within 12 to 18 months from the date of expiration of the public announcement.

If CNIPA has made the decision to approve the registration, it shall issue a trademark registration certificate and make a public announcement. If the opponent refuses to accept the decision, it may request that the registered trademark be declared invalid after the date of registration of the trademark.

If the opponent is not satisfied with CNIPA’s decision that registration may not be granted, it may apply for a review. The review needs to be concluded within 12 to 18 months. If the opponent refuses to accept the review decision, it may file an administrative lawsuit with the Beijing IP Court.

Q 31: What are the circumstances of malicious registration in absolute grounds?

A: (1) Registration is applied not for the purpose of use.

(2) Where registration is obtained by fraudulent means or other improper means, including but not limited to the registration of a large number of others’ trademarks of relatively high distinctiveness or certain recognition.

Q 32: What are the provisions on the invalidation procedure of registered trademarks based on absolute grounds?

A: The invalidation procedure is applicable only to registered trademarks. The filing of an invalidation on the basis of absolute grounds is not restricted to the condition that the trademark has been registered for 5 years.

CNIPA may invalidate a registered trademark that violates the absolute grounds, and other entities or individuals may also request CNIPA to invalidate the registered trademark.

If CNIPA invalidates the registered trademark on its own initiative, it shall notify the trademark registrant. If the registrant is unsatisfied, it may apply for a review. CNIPA shall make a decision within 9 to 12 months after receiving the application for review. If the registrant is not satisfied with the decision upon review, it may bring a suit with the Beijing IP Court.

Where any other entity or individual requests CNIPA to declare a registered trademark invalid, CNIPA shall notify the registrant in writing of defense and make a decision to maintain or invalidate the registered trademark within 9 to 12 months from the date of receiving the application for invalidation. If the applicant or registrant is not satisfied, it may bring a suit with the Beijing IP Court.

Q 33: What are the provisions on the invalidation procedure of registered trademarks based on relative grounds?

A: Within 5 years from the date of trademark registration, the prior right holder or interested party may request CNIPA to declare the invalidity of the registered trademark on relative grounds. In case of malicious registration, the owner of a well-known trademark is not subject to the time limit of 5 years.

After receiving an application for invalidity, CNIPA shall notify the registrant and set a time limit for the registrant to file a defense, and make a decision to maintain or invalidate the registered trademark within 12 to 18 months from the date of receipt of the application. If the party concerned is not satisfied with the decision, it may bring a suit with the Beijing IP Court.

Q 34: What is the consequence of the invalidation of a registered trademark?

A: The trademark that has been invalidated shall be publicly announced by CNIAP, and the exclusive right to use the registered trademark shall be deemed as non-existent ever since.

The decision of invalidating a registered trademark shall have no retroactive effect on the judgments, rulings and conciliation statements of trademark infringement cases made and executed by the people's court before the invalidation, on the decisions of trademark infringement cases made and executed by administrations for industry and commerce, and on the trademark assignment or edible licensing contracts already performed. However, the trademark registrant shall compensate for any damage caused to others due to its bad faith.

If no trademark infringement compensation, trademark assignment fee or trademark usage fee is returned in accordance with the provisions of the preceding paragraph, which obviously violates the principle of fairness, the whole or part of such fees shall be returned.

5. Protection of the Exclusive Right to Use a Trademark

Q 35: What are the circumstances of infringement of the exclusive right to use a registered trademark?

A: (1) Using a trademark identical with the registered trademark on the same class of goods without the permission of the registrant of the trademark;

(2) Using a trademark similar to the registered trademark on the same class of goods, or using a trademark identical with or similar to the registered trademark on similar goods, which is likely to cause confusion without the permission of the registrant of the trademark;

(3) Selling goods infringing the exclusive right to use a registered trademark;

(4) Forging or manufacturing without authorization a registered trademark sign of another person or selling a registered trademark sign that is forged or manufactured without authorization;

(5) Replacing a registered trademark of the registrant and then launching goods with the changed trademark on the market without the consent of the registrant;

(6) Intentionally providing convenient conditions for the infringement of another person's exclusive right to use a trademark, and helping another person to carry out the infringement of the exclusive right to use a registered trademark;

(7) Causing other damage to another person's exclusive right to use a registered trademark.

Q 36: What are the defense reasons for infringement of the exclusive right to use a registered trademark?

A: (1) Fair use, including the proper use of generic names, place names, and other descriptive elements;

(2) Prior rights (prior trademark right, prior enterprise name right, prior copyright, prior name right, prior appearance patent right, unique name, packaging and decoration rights of well-known goods, etc.);

(3) Malicious registration;

(4) Lawful sources;

(5) Exhaustion of rights.

Q 37: What are the relevant provisions on compensation for infringement of the exclusive right to use a trademark?

A: The amount of compensation for the infringement of the exclusive right to use a trademark shall be determined according to the actual losses suffered by the right holder as a result of the infringement; if the actual loss is difficult to determine, it may be determined on the basis of the benefits the infringer has obtained as a result of the infringement; if it is difficult to determine the loss of the right holder or the benefits gained by the infringer, it shall be reasonably determined by reference to the multiple of the trademark licensing fee. In case of serious infringement of the exclusive right to use a trademark, the amount of compensation may be not less than one time but not more than five times the amount determined according to the above methods. The amount of compensation shall include the reasonable expenses paid by the right holder to stop the infringing act.

Where it is difficult to determine the actual losses suffered by the right holder, the benefits gained by the infringer, or the licensing fee of a registered trademark, the people's court shall make a judgment of compensation of less than five million yuan according to the circumstances of the infringing act.

Q 38: What are the competent authorities regulating trademark infringement in China?

A: Administrations of market regulations, part of intellectual property administrations, public security bureaus (criminal), courts and customs.

Q 39: What are the related charges and legal provisions of trademark crime?

A: (1) Crime of counterfeiting registered trademarks

The crime of counterfeiting registered trademarks refers to the serious act of using the same registered trademark on the same class of goods without the permission of owner of the registered trademark in violation of the relevant trademark administrative laws and regulations;

(2) Crime of selling goods with counterfeit registered trademarks;

(3) Crime of illegally manufacturing or selling illegally-manufactured registered trademark signs.