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About Trademark registration in China |
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A trademark is a sign that identifies and distinguishes the source of the goods or
services of one party from those of others. In market economy, trademarks play a
significant role in guiding market business, boosting national economy and protecting
consumers鈥 rights and interests.
Trademark Registration System
China implements the system of trademark registration.
As provided in Article 3 of
the Trademark Law, registered trademarks refer to trademarks that have been
approved and registered by the Trademark Office, and the trademark registrants shall
enjoy the exclusive right to use the trademarks, and be protected by law.
The owner of
a trademark shall apply to the Trademark Office for registration if he wants the
trademark used in business to be fully protected by law.
Exclusive Right to Use a Registered trademark
Once a trademark is approved and registered, the trademark registrant is entitled to the
exclusive rights to use the trademark, which includes:
1. Right to use the trademark: the trademark registrant is entitled to use the trademark
in respect of the goods and service approved and use it in relevant business.
2. Exclusive right: the trademark registrant enjoys the exclusive right to use the
registered trademark, no one else shall use identical or similar trademarks in respect
of identical or similar goods and services.
3. Right to license; the trademark registrant is entitled to authorize other to use the
registered trademark by signing a license contract in accordance with the law.
4. Restraining Power: the trademark registrant is entitled to prohibit any one from
using identical or similar trademarks in respect of identical or similar goods and
services without permission.
5. Right of mortgage: the trademark registrant is entitled to set a mortgage with the
registered trademark in business.
6. Right to invest: The trademark registrant has the right to regard its registered
trademark as the intangible assets and make the investment according to the due
course of law according to the legal provisions
7. Right of assignment: the trademark registrant is entitled to assign the registered
trademark to any one else in accordance with law, either paid or unpaid.
8. Heirdom: The registered trademark can be inherited by its rightful heir according to
the order of inheritance as the incorporeal property.
Means of Trademark Application
Any Native Chinese person or legal entity intending to acquire the Exclusive Right to
Use a Registered trademark can either go to the Trademark Office to apply for the
registration or appoint any of such organizations as designated by the State to act as
his or its agent for the registration.
Any foreign person or foreign enterprise intending
to apply for the registration of a trademark or for any other matters concerning
trademarks in China shall appoint any of such organizations as designated by the
State to act as his or its agent.
Which Signs can be Registered as Trademarks?
As provided in Article 8 of the Trademark Law, in respect of any visual sign capable
of distinguishing the goods or service of one natural person, legal entity or any other
organization from that of others, including any word, design, letters of an alphabet,
numerals, three-dimensional symbols, combinations of colors, and their combination,
an application may be filed for registration.
Meanwhile, it is also provided in Article 9
that Any trademark in respect of which an application for registration is filed shall be
so distinctive as to be distinguishable, and shall not conflict with any prior right
acquired by another person.
Who can Apply for Trademark Registration?
As provided in Article 4 of the Trademark Law, any natural person, legal entity or
other organization intending to acquire the Exclusive Right to Use a Registered
trademark for the goods produced, manufactured, processed, selected or marketed by
him or it, or for the service provided by him or it, shall file an application for the
registration of the trademark with the Trademark Office.
Which Signs shall not be Used as Trademarks?
As provided in Article 10 of the Trademark Law, the following signs shall not be used
as trademarks:
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 that 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 intergovernmental organizations, except that the organizations 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 authorized;
5. Those identical with or simi1ar 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.
The geographical names as the administrative divisions at or above the county level
and the foreign geographical names well known to the public shall not be used as
trademarks, but such geographical terms as have otherwise meanings or are a part of
collective marks/or a certification marks shall be exclusive. Where a trademark using
any of the above-mentioned geographical names has been approved and registered, it
shall continue to be valid.
Which Signs shall not be Registered as Trademarks?
As provided in Article 11, the following signs shall not be registered as trademarks:
1. Those only comprising generic names, designs or models of the goods in respect of
which the trademarks are used;
2. Those having direct reference to the quality, main raw materials, function, use,
weight, quantity or other features of the goods in respect of which the trademarks are
used; and
3. Those lacking distinctive features.
The signs under the preceding paragraphs may be registered as trademarks where they
have acquired the distinctive features through use and become readily identifiable.
As also provided in Article 28 of the Trademark Law, where a trademark the
registration of which has been applied for is identical with or similar to the trademark
of another person that has, in respect of the same or similar goods, been registered or,
after examination, preliminarily approved, the Trademark Office shall refuse the
application.
Trademarks and Service Marks
Trademarks are the trademarks used in respect of goods, while service marks are
those used in respect of service. China began the acceptance of applications for
service marks registration from June 1st , 1993.
Collective Marks and Certification Marks
Collective marks mean signs which are registered in the name of bodies, associations
or other organizations used by the members thereof in their commercial activities to
indicate their membership of the organizations.
Certification marks mean signs which
are controlled by organizations capable of supervising some 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 Indications
Geographical indications refer to the indications that identify a particular good as
originating in a region, where a given quality, reputation or other characteristic of the
goods is essentially attributable to its natural or human factors.
Geographical
indications are protected through trademark laws in China, since they can be
registered as certification marks and collective marks. Up to now, there have been
over 100 certification marks with geographical indications therein registered in China,
including American 鈥淔lorida鈥 oranges, Chinese 鈥淜uerle Pear鈥 (Xinjiang Autonomous
Region), 鈥淗ami Melon鈥, 鈥淛ingdezhen china鈥 (Jiangxi province) and so on.
Three-dimensional Marks and Color Trademarks
Three-dimensional marks refer to the three-dimensional symbols used in respect of
goods and service, and color trademarks are combinations of colors or any
combination of the colors, words, devices and other elements.
As provided in Article
12 of the Trademark Law, Where an application is filed for registration of a
three-dimensional sign as a trademark, any shape derived from the goods itself,
required for obtaining the technical effect, or giving the goods substantive value, shall
not be registered.
China began the acceptance of applications for three-dimensional
and color trademarks registration from December 1st , 2001.
Protection of Well-known Trademarks
China has been fulfilling her promise to the world to protect the legitimate rights and
interests of both Chinese and foreign trademark owners since China became party to a
member of Paris Convention for the Protection of Industrial Property.
As provided in
Article 25 of Regulations for the Implementation of Trademark Law revised in 1993,
to violate the principles of honesty and credit and plagiarize, counterfeit or translate
any well-known trademark of another party in the registration shall be deemed as acts
committed in the acquisition of a trademark registration by fraud or any other unfair
means.
As provided in Article 13 of the Trademark Law revised in 2001, where a
trademark in respect of which the application for registration is filed for use for
identical or similar goods is a reproduction, imitation or translation of another
person's trademark not registered in China and likely to cause confusion, it shall be
rejected for registration and prohibited from use.
Where a trademark in respect of
which the application for registration is filed for use for non-identical or dissimilar
goods is a reproduction, imitation or translation of the well-known mark of another
person that has been registered in China, misleads the pub1ic and is likely to create
prejudice to the interests of the well-known mark registrant, it shall be rejected for
registration and prohibited from use.
As provided in Regulations for the
Implementation of Trademark Law revised in 2002, a trademark owner who believes
that the registration of its well-known trademark as an enterprise name by another
person is likely to deceive or mislead the public may apply to the competent
registration authorities of enterprise names for the cancellation of the registration of
the enterprise name.
Procedures for Trademark Registration
After the acceptance of the application for trademark registration, the procedures for
trademark registration includes the following periods: formality check, substantive
examination, being preliminarily approved and published, opposition and being
approved for registration.
The opposition period includes three months from the date
of the publication, any person may, within this period, file an opposition against the
trademark that has, after examination, been preliminarily approved.
Where any party
concerned is dissatisfied with the Trademark Office鈥檚 decision of refusal of the
registration application, decision of opposition and decision of cancellation, he or it
may apply for a review to the Trademark Review and Adjudication Board.
Where any
party concerned considers a registered trademark to be improperly registered, he or it
may apply for cancellation of the trademark to the Trademark Review and
Adjudication Board.
Where any party concerned is dissatisfied with the decision of
the Trademark Review and Adjudication Board, he or it may institute legal
administrative proceedings with Beijing No. 1 Intermediate People's Court.
Period of Validity of a Registered Trademark
The period of validity of a registered trademark shall be ten years, counted from the
date of approval of the registration.
Where the trademark registrant intends to
continue to use the registered trademark beyond the expiration of the period of
validity, an application for renewal of the registration shall be made within six months
before the said expiration.
Where no application therefore has been filed within the
said period, a grace period of six months may be allowed, yet extra fees shall be
charged for the delay of renewal.
If no application has been filed at the expiration the
grace period, the registered trademark shall be cancelled. The period of validity of
each renewal of registration shaIl be ten years.
Assignment and Licensing of Registered Trademarks
The right holder of a trademark has the right to deal with his/her intangible property
in accordance with legal procedures. Trademark holders can dispose trademark right
either by assignment or by licensing.
Trademark assignment is the transfer of
trademark ownership to another party voluntarily by the right holder, either paid or
unpaid. And a trademark transfer caused by merger, annex or judgment by a court can
also be viewed as trademark assignment.
In that case, the assignee should handle
assignment with the Trademark Office. After approval, an assigned trademark can be
publicized on the Trademark Gazette.
The assignee enjoys the exclusive right to use
the trademark since the date of publication. The trademark licensing of registered
trademarks is to allow others to use the trademarks without assigning the ownership.
To license a registered trademark, the licensor shall sign a trademark license contract
with the licensee. And the licensor shall report the contract to the Trademark Office to
make a record of the contract within 3 months counting from the date on which the
contract was signed.
Acts Deemed as an Infringement of the Exclusive Right to Use a Registered
Trademark
As provided in Article 52 of the Trademark Law and Article 52 of Regulations for the
Implementation of Trademark Law, Any of the following acts shall be an
infringement of the exclusive right to use a registered trademark:
1. To use a trademark that is identical with or similar to a registered trademark in
respect of the identical or similar goods without authorization from the trademark
registrant;
2. To sell goods knowingly which contain a counterfeit trademark;
3. To counterfeit, or to make, without authorization, representations of a registered
trademark of another person, or to sell such representations of a registered trademark
as were counterfeited, or made without authorization;
4. To replace, without the consent of the trademark registrant, its or his registered
trademark and market again the goods bearing the replaced trademark;
5. To use any signs which are identical or similar to another person鈥檚 registered
trademark as the name of the goods or decoration of the goods on the same or similar
goods, thus misleading the public;
6. To intentionally provide facilities such as storage, transport, mailing, concealing,
etc. for the purpose of infringing another person鈥檚 exclusive right to use a registered
trademark.
Protection of the Exclusive Right to Use a Registered trademark
Protection of the exclusive right to use a registered trademark can be achieved
through both administrative means and judicial means.
Where any party has
committed any of such acts to infringe the exclusive right to use a registered
trademark, the interested party can complain to local Administrations for Industry and
Commerce at or above county level, requiring the administrations to investigate and
handle the cases.
The administrative authority for industry and commerce has the
power to make an administrative decision to the cases which are not serious enough to
constitute a crime, where the case is so serious as to constitute a crime, it shall be
transferred to the judicial authority for handling.
Where any interested party is
dissatisfied with decision on handling the matter, it or he may, within fifteen days
from the date of receipt of the notice, institute legal proceedings in the People's Court
according to the Administrative Procedure Law of the People's Republic of China.
If
there have been instituted no legal proceedings or made on performance of the
decision at the expiration of the said period, the administrative authority for industry
and commerce shall request the People's Court for compulsory execution thereof.
The
interested party may also institute legal proceedings in the People's Court directly, and
the court will protect the legitimate rights and interests of the right owner according to
the Civil Procedure Law of the People's Republic of China.
Administrative Proceedings against Trademark Infringements
According to the relevant provisions of the Trademark Law, any one can complain to
the local administrations at or above the county level where the infringer resides or
the infringement took place.
The complaints shall be put in the written form usually,
noting relevant information and evidence, such as the name, address of the infringer,
the place where the infringement took place or was found, and relevant marks which
are suspected to have infringed registered trademarks or stuff like photos and so on.
Meanwhile, the interested party can also make a complaint on the phone. Where the
trademark registrant complains to the administrative authority for industry and
commerce, requesting for protection of the exclusive right to use a registered
trademark, the written form shall be handed in with effective certification.
Once the
administrative authority decides to deal with the case, it shall notify the complaint of
the result.
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