1 Legal framework

1.1 What is the statutory or other source of trademark rights?

The Trademark Law of the People's Republic of China.

1.1 What is the statutory or other source of trademark rights?

The Trademark Law of the People's Republic of China

1.2 How do trademark rights arise (ie, through use or registration)?

Through registration.

1.2 How do trademark rights arise (ie, through use or registration)?

By registration.

1.3 What is the statutory or other source of the trademark registration scheme?

The Trademark Law of the People's Republic of China and the Regulations for the Implementation of the Trademark Law of the People's Republic of China.

1.3 What is the statutory or other source of the trademark registration scheme?

  • The Trademark Law of the People's Republic of China;
  • The Regulation on the Implementation of the Trademark Law; and
  • The Trademark Review and Adjudication Rules and the Trademark Examination and Adjudication Guidelines published by the China National Intellectual Property Administration.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

Any sign that is capable of distinguishing the goods of a natural person, a legal person or any other organisation from those of others – including a word, device, letter, numeral, three-dimensional symbol, combination of colours or sound, as well as a combination of the above – may serve as a trademark for registration application.

2.1 What types of designations or other identifiers may serve as trademarks under the law?

Any signs – including words, graphs, letters, numbers, three-dimensional symbols, colour combinations, sounds or any combination thereof – that are capable of distinguishing the goods of a natural person, legal person or other organisation from those of others may be applied for registration as trademarks.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

A trademark submitted for registration must bear noticeable characteristics and be readily distinguishable, and must not conflict with legitimate rights previously obtained by others.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

The trademark for registration:

  • must be distinctive for easy identification;
  • may not be prohibited under the Trademark Law; and
  • may not conflict with any prior legal rights acquired by others.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

The following types of designations are ineligible to function as trademarks:

  • marks that are devoid of distinctiveness, such as those that consist only of:
    • the generic names, devices or model numbers of the goods concerned; or
    • a direct representation of the quality, primary raw materials, functions, intended purposes, weight, quantity or other characteristics of the goods concerned;
  • marks that are prohibited under the Trademark Law, such as those which:
    • are identical or similar to the name, flag or emblem of China or another foreign countries or international intergovernmental organisation; or
    • are deceptive, with the potential to easily mislead the public regarding the quality or origin of the goods (see question 3.8); and
  • marks that conflict with the prior legal rights of others, including trademark rights, copyright, trade names, personal names or even commercialisation rights.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

None of the following signs may be used as trademarks:

  • signs that are identical or similar to the state name, the national flag, emblem or anthem, the military flag, emblem or songs or medals of the People's Republic of China; or signs that are identical to the names or emblems of central state organs, the names of specific locations where central state organs are seated, or the names or designs of landmark buildings;
  • signs that are identical or similar to the state name, national flag, national emblem or military flag etc of a foreign country, except with the consent of the government of that country;
  • signs that are identical or similar to the name, flag or emblem of an international inter-governmental organisation, except with the consent of that organisation or except where it is unlikely to mislead the public;
  • signs that are identical or similar to an official mark or inspection stamp that indicates control and guarantee, except where authorised;
  • signs that are identical or similar to the symbol or name of the Red Cross or the Red Crescent;
  • signs that discriminate against any nationality;
  • signs that are deceptive and likely to mislead the public in terms of the quality, place of production or other characteristics of the goods; and
  • signs that are detrimental to socialist ethics or customs, or that have other unwholesome influences.

No geographical names of administrative divisions at or above the country level or foreign geographical names known to the public may be used as trademarks, except where the geographical name has another meaning or constitutes part of a collective trademark or certification trademark. Registered trademarks in which geographical names are sued shall remain valid.

None of the following marks may be registered as trademarks:

  • a mark which bears only the generic name, design or model number of the goods concerned;
  • a mark which only directly indicates the quality, principal raw materials, function, use, weight, quantity or other features of the goods; or
  • a mark that otherwise lacks distinctive character.

However, such a mark may be registered as a trademark if it has acquired distinctive features through use and is readily distinguishable.

No application for registration of a three-dimensional symbol as a trademark may be granted where the sign merely indicates the shape inherent in the nature of the goods concerned, or is dictated by the need to achieve technical effects or the need to give the goods substantive value.

Where a trademark bears a geographical indication of the goods and the place indicated is not the origin of the goods in question, thus misleading the public, the trademark shall not be registered and its use shall be prohibited. However, where the registration is obtained in good faith, it shall remain valid.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The China Trademark Office (CTMO).

3.1 Which governing body (ie, trademark office) controls the registration process?

The China National Intellectual Property Administration.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

Only an application fee.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

RMB300 for application per mark per class. If the designated goods or services exceed the basic 10 items, an extra fee of RMB30 for each additional item is charged.

There is no official fee for issuance of the registration.

3.3 Does the trademark office use the Nice Classification scheme?

Yes, the CTMO uses the Nice Classification.

3.3 Does the trademark office use the Nice Classification scheme?

Yes.

3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

‘Class-wide' applications are not allowed; the relevant goods and/or services must be specified.

3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

Class-wide applications are not allowed in China. The applicant should identify the specific goods or services for which the mark will be used.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

To apply for registration, the applicant need not prove actual use or bona fide intent to use the mark.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

No. However, a bad-faith application for trademark registration for a purpose other than use shall be rejected according to Article 4 of the Trademark Law.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes, the CTMO searches for earlier conflicting marks.

3.7 What types of examinations does the trademark office perform other than relative examination?

The CTMO also performs absolute examination – that is, whether the mark itself can be used or registered as a trademark.

3.7 What types of examinations does the trademark office perform other than relative examination?

Distinctiveness and public policy (see question 3.8)

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Yes. The grounds for refusal of registration regarding public policy include the following:

  • The mark is identical or similar to the name, national flag, national emblem, national anthem, military flag, military emblem, military anthem or decoration of China; or is identical to the name or symbol of a central state organ, the name of the specific place where it is located or the name or design of its landmark building;
  • The mark is identical or similar to the name, national flag, national emblem or military flag of a foreign country, except as permitted by the government of that foreign country;
  • The mark is identical or similar to the name, flag or emblem of an international intergovernmental organisation, except as permitted by the organisation or unless it would not generally mislead the public;
  • The mark is identical or similar to an official sign or an inspection mark which indicates control or provides a guarantee, except as authorised;
  • The mark is identical or similar to the name or sign of the Red Cross or the Red Crescent;
  • The mark incorporates aspects that constitute ethnic discrimination;
  • The mark is deceptive and would easily mislead the public regarding the quality or origin of goods; or
  • The mark would be detrimental to socialist morality or mores, or would have any other adverse effect.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Marks that are identical or similar to the state name, the national flag, emblem or anthem, the military flag and many other conditions cannot be registered as trademark in China. Please refer to question 2.3 for detailed explanation.

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

A descriptive mark may be registered as a trademark if it has acquired distinctive features through use and is readily distinguishable. There is no separate or supplemental register for descriptive marks.

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No. However, if a descriptive mark has obtained distinctiveness through use and can be easily identified, it may be registered as a trademark by filing use evidence to overcome rejection due to descriptiveness.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

Normally no. However, it is possible to submit a letter of protest to the trademark office if the mark has been filed in bad faith.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

A third party cannot object to registration of a mark before the application has been published in China. Opposition after publication of the application is the only way for a third party to object to the registration of a mark.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

Commercial use is not required to obtain a registration of a trademark in China.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

No. There is no need to file use evidence or a statement of intent to use to have a mark registered.

3.12 How much time does it typically take from filing an application to the first office action?

Around three months to receive notification of amendment, if the goods or services are not acceptable.

Around five to eight months to receive notification of refusal.

3.12 How much time does it typically take from filing an application to the first office action?

It takes around two months from filing of the application to the first notification for amendment.

It takes around six to nine months from filing of the application to rejection.

3.13 How much time does it typically take from filing an application to publication?

For a smooth application, it takes around six to nine months from filing of the application to publication.

3.13 How much time does it typically take from filing an application to publication?

Around nine months.

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

Yes, the applicant is entitled to file an appeal against the rejection before the China National Intellectual Property Administration (CNIPA) within 15 days of receipt of the notification.

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

The applicant can appeal before the Trademark Review and Adjudication Board (TRAB).

4.2 What is the procedure for appealing a trademark office refusal?

If dissatisfied with the refusal, the applicant is entitled to pursue the application by lodging an appeal against the China Trademark Office's refusal with TRAB within 15 days of the date of receipt of the refusal. If the refusal is sent via registered mail, the date indicated by the postmark shall be the date on which the applicant receives the notification. If the refusal is sent via electronic form, the notification will be deemed as received by the applicant 15 days after it was sent. Extension is not allowed.

4.2 What is the procedure for appealing a trademark office refusal?

  • The applicant must file an appeal with CNIPA against the rejection within the specified deadline. It is possible first to file an appeal with outlined arguments before the deadline and then supplement this with detailed arguments and evidence in the following three months.
  • The CNIPA will issue an official filing receipt if the documents satisfy the formality requirement.
  • The CNIPA then makes an appeal decision.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

Yes. The applicant is entitled to file a lawsuit with the Beijing Intellectual Property Court within 30 days of receipt of the decision.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

According to Article 34 of the Trademark Law of the People's Republic of China, if dissatisfied with the adjudication, the applicant may file suit against TRAB's adjudication before the Beijing Intellectual Property Court within 30 days of the date of receipt of the adjudication.

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes, a third party can oppose a trademark application during the three-month opposition period.

5.1 Can a third party oppose a trademark application?

Yes.

5.2 Who has standing to oppose a trademark application?

A prior rights holder or materially interested party has standing to oppose a trademark based on prior rights (relative grounds).

Anyone has standing to oppose a trademark based on public policy and/or lack of distinctiveness (absolute grounds).

5.2 Who has standing to oppose a trademark application?

If a holder of prior rights or an interested party holds that the published trademark is in violation of relative grounds for refusal, it may oppose the mark within the opposition period.

Any party that is of the opinion that the published mark is in violation of absolute grounds for refusal may oppose the mark within the opposition period.

5.3 What is the timeframe for opposing a trademark application?

The opposition period is three months as from the publication date of the mark.

5.3 What is the timeframe for opposing a trademark application?

Within three months of the preliminary publication date of the trademark.

5.4 Which body hears oppositions?

The Trademark Office of the China National Intellectual Property Administration (CNIPA).

5.4 Which body hears oppositions?

The China Trademark Office (CTMO).

5.5 What is the process by which an opposition proceeds?

Where an opposition is raised, the CTMO will send a notification and a copy of the opposition to the opposed party. The opposed party has 30 days from receipt of the notification to respond; further evidence can be submitted within three months of the response date. Whether the opposed party responds or not, the CTMO will decide whether to approve the registration of the mark after investigation and verification.

5.5 What is the process by which an opposition proceeds?

  • The opponent files an opposition with CNIPA within three months of the preliminary publication date. It is possible first to file an opposition with outlined arguments before this deadline and then supplement this with detailed arguments and evidence in the following three months.
  • The CNIPA will issue an official filing receipt if the documents satisfy the formality requirement.
  • The CNIPA will then issue one set of filing documents to the trademark owner for response within 30 days of the date of receipt. It is possible to supplement this response with further arguments and evidence within the following three months.
  • The trademark owner's response (if any) will not be served on the opponent for review and rebuttal.
  • The CNIPA will issue its opposition decision based on the opponent's arguments and the trademark owner's response (if any).

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

If the opposed mark is approved for registration in the opposition proceedings, this decision cannot be appealed.

However, if registration is refused in the opposition proceedings, the trademark applicant is entitled to appeal this decision with the appeal department of the CNIPA within 15 days of receipt of this decision.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

If dissatisfied with the CTMO's decision to approve registration of the trademark, the opponent may request the Trademark Review and Adjudication Board (TRAB) to declare the registration invalid.

If dissatisfied with the CTMO's decision not to approve registration of the trademark, the opposed party may apply for a second review to TRAB within 15 days of receipt of the relevant notice.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

Where a trademark used for identical or similar goods is a reproduction, imitation or translation of another person's well-known trademark not registered in China and is liable to cause public confusion, no application for registration may be granted and its use shall be prohibited.

An application to register a trademark for identical or similar goods shall not be approved if:

  • the trademark under application is identical or similar to an unregistered trademark already used by another party;
  • the applicant is clearly aware of the existence of the trademark of that other party due to contractual, business or other relationships with the latter; and
  • that other party raises an opposition to the trademark application.

No trademark applicant may, by illegitimate means, seek to register a trademark that is already in use by another person and has acquired a certain influence.

Anyone that uses another party's unregistered well-known trademark as a trade name and thereby misleads the public, which constitutes an act of unfair competition, shall be dealt with in accordance with the Anti-unfair Competition Law of the People's Republic of China.

If, before a trademark applicant submits its trademark application, another party has used a trademark that has acquired certain influence and is identical or similar to the registered trademark for the same or similar goods or services, the holder of the exclusive right to use the registered trademark has no right to prohibit that party from continued use of the trademark within the original scope of use. However, the right holder may require the latter to add a mark to distinguish between the two.

6.1 What, if any, protection is afforded to unregistered trademarks?

An unregistered trademark can be protected:

  • in respect of identical or similar goods or services based on the Trademark Law, if it has achieved well-known status; or
  • under the Anti-Unfair Competition Law, if it is also a famous product or service name.

In practice, however, it is difficult to prove that a trademark has achieved well-known status in mainland China.

If the trademark owner has used its trademark in mainland China without registering it prior to the application date of a third party's registered trademark, and if its trademark has a certain influence, then that third party will have no right to prohibit the trademark owner from using its trademark within the original scope of use. However, the third party can require the trademark owner to add an appropriate distinguishable sign to its mark (Article 59 of the Trademark Law).

6.2 What legal rights are conferred by a trademark registration?

  • Exclusive use right: The trademark owner is entitled to use the registered trademark on the approved goods or services and to use the registration symbol (®). Others cannot use the trademark without the trademark owner's authorisation.
  • Licence right: The trademark owner can license its registered trademark to another party by entering into a trademark licence contract.
  • Assignment right: The trademark owner can assign the registered trademark to others in accordance with legal procedures and conditions.
  • Mortgage right: The trademark owner can mortgage its registered trademark to others.
  • Investment right: The trademark owner has the right to invest its registered trademark as an intangible asset in accordance with legal provisions and legal procedures.
  • Renewal right: The trademark owner has the right to renew its registration.
  • Prohibition right: The trademark owner is entitled to stop others from using an identical or similar trademark on the same or similar goods or services.
  • Inheritance right: If the trademark owner dies, his or her legal heir will have the right to possess, use, benefit from and dispose of the registered trademark.

6.2 What legal rights are conferred by a trademark registration?

The exclusive right to use the registered trademark. However, this right is limited to trademarks which are registered upon approval and to goods for which use of the trademark is approved.

Any of the following acts shall constitute infringement of the exclusive rights to use a registered trademark:

  • using a trademark that is identical to a registered trademark for the same kind of goods without a licence from the trademark owner;
  • using a trademark that is similar to a registered trademark for the same kind of goods, or using a trademark that is identical or similar to a registered trademark for similar goods, without a licence from the trademark owner, where such use is likely to cause confusion
  • selling goods that infringe the exclusive right to use a registered trademark;
  • counterfeiting, or making without authorisation, representations of another person's registered trademark, or selling such representations;
  • altering a registered trademark without the permission of its owner and selling goods bearing such an altered trademark;
  • intentionally committing acts that infringe the exclusive right to use a trademark, or facilitating the commission of such acts; and
  • impairing another party's exclusive right to use a registered trademark in any other manner.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

No.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

There is no separate register for descriptive marks.

If a descriptive trademark has obtained a high reputation through substantial long-term use, the applicant can try to register the mark with the China National Intellectual Property Administration. However, the descriptive trademark will still initially be rejected on absolute grounds, so the applicant will have to appeal and submit evidence of substantial use to prove that the trademark has obtained distinctiveness through use. It can then be registered as a trademark.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

China has a dual-track enforcement system for IP infringement: administrative enforcement and judicial enforcement. Judicial enforcement includes civil remedies and criminal remedies.

The remedies in administrative enforcement include:

  • cessation of the infringement;
  • confiscation or destruction of infringing articles and materials or implements used mainly to manufacture the infringing products; and
  • fines, which can be as high as five times the infringer's illegal business revenue.

The remedies in civil lawsuits include:

  • injunctions;
  • cessation of the infringement;
  • destruction of infringing articles and materials or implements used mainly to manufacture the infringing products;
  • compensation for damages and legal expenses; and
  • elimination of influences (ie, publication by the infringer of statements acknowledging the infringement in order to counteract any negative impact that the infringement may have had on the mark's goodwill).

Punitive damages are available, which can be as high as five times the mark owner's losses or the infringer's profits. Statutory damages can be as high as RMB 5 million.

The remedies in criminal lawsuit include:

  • fines; and
  • imprisonment for up to seven years, which will be increased to 10 years from 1 March 2021.

7.1 What remedies are available against trademark infringement?

Customs measures: The owner of a registered trademark can record its registered trademark right with the General Administration of Customs of the People's Republic of China. Upon discovering suspected infringing goods pending import or export, the trademark owner may present an application to Customs at the port of entry to detain such goods and provide Customs with security. Customs will then detain the suspected infringing goods.

On discovering any imports or exports that are suspected of infringing a recorded registered trademark right, Customs shall immediately notify the trademark owner in writing of the suspected infringement. If the trademark owner presents an application and provides security within three working days of the date of service of this notification, Customs will detain the suspected infringing goods.

Customs shall investigate and then determine, within 30 working days of the date of detention, whether the suspected infringing goods are in fact infringing. The suspected infringing goods shall be confiscated by Customs if it determines that they have infringed a registered trademark right. Where the import or export of infringing goods constitutes a crime, criminal liability shall be investigated according to the law.

AIC measures: A trademark owner or an interested party may further request the relevant administrative department for industry and commerce (AIC) to address the issue. If the AIC finds that an infringement has occurred, it shall order the relevant party to immediately cease the infringing acts, and shall confiscate and destroy the infringing goods and instruments mainly used to manufacture the infringing goods and forge the registered trademark. Where the illegal business revenue is RMB50,000 or more, a fine of up to five times the illegal business revenue may be imposed; where there is no illegal business revenue or the illegal business revenue is less than RMB50,000, a fine of up to RMB250,000 may be imposed thereon.

If a party commits trademark infringement on two or more occasions within five years or falls under any other serious circumstances, it shall be subject to more severe punishment.

If a party is unaware of the infringing nature of products that it sells, can prove that the products were obtained by legitimate means and can provide information on the suppliers of the products, the AIC shall order it to stop selling the products.

In case of a dispute over the amount of damages due for trademark infringement, the parties may apply to the AIC for mediation, or may file suit at the people's court in accordance with the Civil Procedure Law of the People's Republic of China. If the parties fail to reach agreement through mediation, or fail to execute the mediation agreement once it has become effective, the parties may file suit at the people's court in accordance with the Civil Procedure Law of the People's Republic of China.

The AIC has the power to investigate any act of trademark infringement. If it suspects that a crime has been committed, it shall promptly transfer the case to a judicial department for handling in accordance with the law.

In investigating a case of suspected trademark infringement, an AIC at or above county level may conduct inspections and seal or seize articles that are proven to have been used for the infringement.

Judicial remedy: A trademark owner or an interested party may further file suit before the people's court.

The amount of damages for trademark infringement shall be determined based on the actual loss suffered by the trademark owner as a result of the infringement. If it is difficult to determine the actual loss suffered, the amount of damages may be determined according to the profits earned by the infringer. If it is difficult to determine both the loss of the trademark owner and the profits earned by the infringer, the amount of damages may be reasonably determined by reference to the multiple of royalties payable for a licence for the trademark. If the infringement is malicious and serious, the damages may be doubled or trebled. The amount of damages awarded shall cover reasonable expenses incurred by the trademark owner in stopping the infringing act.

If the trademark owner has exhausted its efforts in discharging its burden of proof, but the account books and materials relating to the infringement are mainly controlled by the infringer, the people's court may order the infringer to submit account books and materials relating to the infringement. If the infringer fails to provide such account books or materials, or provides false account books or materials, the people's court may render a judgment on the amount of damages based solely on the claims of, and the evidence presented by, the trademark owner.

If it is difficult to determine the actual loss suffered by the trademark owner as a result of the infringement, the profits earned by the infringer from the infringement or the royalties for a licence, the people's court shall render a judgment awarding damages in an amount of up to RMB3 million based on the circumstances of the infringement.

If the trademark owner or an interested party proves that another party has infringed or will soon infringe its trademark, and that unless promptly stopped, such infringement will cause irreparable damage to its legitimate rights and interests, it may, in accordance with the law, apply to the people's court for an injunction to preserve assets before a lawsuit is filed.

In order to stop an infringement, and where evidence may vanish or be destroyed, or may become unobtainable in the future, the trademark owner or interested party may, in accordance with the law, apply to the people's court for evidence preservation before filing a lawsuit.

If a party, without the permission of the owner of a registered trademark, uses an identical trademark for the same kind of goods, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

If a party counterfeits or makes without permission representations of another person's registered trademark, or sells such representations, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

If a party knowingly sells goods bearing a counterfeit registered trademark, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

7.2 What remedies are available against trademark dilution?

According to the Trademark Law, where a trademark used for different goods or services reproduces, imitates or translates a registered well-known trademark, and such use misleads the public in a way that is likely to impair the interests of the owner of the registered well-known trademark, no application for registration may be granted and its use shall be prohibited. The owner of the registered well-known trademark or an interested party may file suit before the people's court or request the relevant administrative department for industry and commerce (AIC) to address the dispute.

7.2 What remedies are available against trademark dilution?

Dilution applies only to the protection of well-known trademarks in China. The trademark owner may seek the remedies outlined in question 7.1.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

Besides infringement and dilution, the following activities are considered to constitute harm to trademark rights and are prohibited by law (mainly by the Anti-Unfair Competition Law):

  • using a third party's registered trademark or unregistered well-known trademark as a trade name or enterprise name in a way that would mislead the public, which constitutes unfair competition;
  • trademark squatting and then filing litigation in bad faith; or
  • conducting other activities which may cause confusion and constitute unfair competition.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

Anyone that uses the registered trademark or the unregistered well-known trademark of another party as a trade name in a way that misleads the public, which constitutes an act of unfair competition, shall be dealt with in accordance with the Anti-unfair Competition Law of the People's Republic of China.

7.4 What is the procedure for pursuing claims for trademark infringement?

The trademark owner or an interested party may file suit before the people's court or request the relevant AIC to address the dispute. The AIC's decision may be appealed before the people's court. There are usually two instances of appeal.

7.4 What is the procedure for pursuing claims for trademark infringement?

  • Filing an Administration for Market Regulation complaint against the infringer to seek administrative enforcement;
  • Filing a civil lawsuit against the infringer with the competent court; or
  • Filing a complaint or reporting clues to the police for a criminal investigation, which may lead to criminal prosecution by the competent procuratorate. The trademark owner can claim damages in some criminal proceedings, although this is rare. It is also possible to initiate a separate civil lawsuit to claim damages after the criminal proceedings.

7.5 What typical defences are available to a defendant in trademark litigation?

  • No likelihood of confusion;
  • Fair use without bad faith;
  • Exhaustion of trademark rights;
  • Invalidity of the trademark registration;
  • Prior and continued use of the trademark within its original scope;
  • Use by an original equipment manufacturer without local sales;
  • Abuse of the rights of squatters; or
  • Procedural defects such as expiration of the deadline to take legal action or objection to the jurisdiction of the courts.

7.5 What typical defences are available to a defendant in trademark litigation?

If, before an applicant applies to register a trademark, another party has used an identical or similar trademark that has acquired a certain influence for the same or similar goods or services, the applicant cannot prohibit that party from continued use of its trademark within the original scope of use. However, the applicant may require the latter to add a proper mark for the purposes of distinguishing between the two marks.

Where a trademark owner seeks damages for infringement and the alleged infringer counterclaims that the trademark owner has never used the registered trademark, the people's court may require the trademark owner to provide evidence of actual use of the registered trademark in the three years prior to the lawsuit. The alleged infringer shall not be liable for compensation if the trademark owner cannot prove actual use of the registered trademark in the three years prior to the lawsuit, and further cannot prove other losses suffered as a result of the infringement.

If a party is unaware of the infringing nature of products which it is selling, can prove that the products were obtained by legitimate means and can provide information on the suppliers of the products, it shall not be liable for compensation.

7.6 What is the procedure for appealing a decision in trademark litigation?

If dissatisfied with a first-instance decision of the local people's court, a party may appeal to the people's court at the next level within 15 days of the date of service of the decision. There are usually two instances of appeal.

7.6 What is the procedure for appealing a decision in trademark litigation?

If any party is dissatisfied with the first instance decision, it is normally entitled to appeal to a higher court at second instance. The second instance is normally the last instance and its ruling will be final (where the first instance court is the Supreme People's Court, there is no opportunity to appeal to a second instance court). However, a retrial once a decision has come into effect is also possible under very strict conditions, such as where there are obvious mistakes in the ruling or where there were substantial procedural defects in the previous proceedings.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

The initial term of registration is 10 years. The trademark may be renewed indefinitely for subsequent 10-year terms thereafter.

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

A registered trademark remains valid for 10 years in China, as from the date on which the registration is approved, and may be renewed for subsequent 10-year periods thereafter, as from the date immediately following the expiry date of the last period of validity.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

  • An application form for renewal;
  • A certificate of incorporation;
  • An executed power of attorney; and
  • The renewal fee.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

The application form for renewal, together with power of attorney and identity documentation and the renewal fee.

8.3 What are the grounds for cancelling a trademark registration?

The absolute grounds for invalidation are as follows (Article 44 of the Trademark Law):

  • The trademark was registered in bad faith without intent to use;
  • The trademark incorporates or consists of prohibited characteristics which are in violation of public policy (see question 3.8);
  • The trademark is devoid of distinctiveness (see question 2.3); or
  • The registration was obtained through deceptive means or other improper means.

The relative grounds for invalidation (Article 45 of the Trademark Law) are as follows:

  • The trademark infringes the prior legal rights of others, including trademark rights, copyright, trade names, personal names or even commercialisation rights.

The grounds for cancellation are as follows (Article 49 of the Trademark Law):

  • The trademark owner changes its registered trademark, or its name, address or other registered particulars, and fails to rectify the matter within the prescribed timeframe stipulated by the local Administration for Industry and Commerce;
  • The registered trademark becomes the generic name of the goods for which it has been approved; or
  • The registered trademark is not used for three consecutive years without a legitimate reason.

8.3 What are the grounds for cancelling a trademark registration?

According to the Trademark Law, a registration will be cancelled if:

  • the trademark is ineligible to function as trademark or its registration was obtained by fraudulent or other illegitimate means;
  • the registration infringes another party's prior civil rights; or
  • the trademark has become the generic name of the goods for which its use is approved or has not been used for three consecutive years without a justifiable reason.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

According to the Trademark Law, a trademark may be cancelled at the initiative of the trademark office if it is ineligible to function as a trademark or if its registration was obtained by fraudulent or other illegitimate means.

If a trademark owner, without authorisation, alters the registered trademark, its name or address of or other registered information, it will be ordered to correct such alteration within a timeframe specified by the relevant local administrative department for industry and commerce (AIC); if it fails to do so, the registration will be cancelled.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

Please see question 8.3.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

Invalidation on absolute grounds:

  • Any entity or individual can file an application to request the China National Intellectual Property Administration (CNIPA) to declare a registered trademark invalid on absolute grounds at any time.
  • The CNIPA will serve a copy of the invalidation documents on the trademark owner along with a notification for response within a designated timeframe.
  • The CNIPA will issue its decision within nine to 12 months of the date of receipt of the application.

Invalidation on relative grounds:

  • Prior rights holders and interested parties can file an application to request the CNIPA to declare a registered trademark invalid on relative grounds within five years of registration of the trademark. However, the owner of a well-known trademark is not subject to this five-year timeframe if the registration was registered in bad faith.
  • The CNIPA will serve a copy a copy of the invalidation documents on the trademark owner along with a notification for response within a designated timeframe.
  • The CNIPA will issue its decision within 12 to 18 months of receipt of the application.

Cancellation:

  • Any entity or individual can file an application with the CNIPA to have a registered trademark cancelled.
  • The CNIPA will serve a copy a copy of the cancellation documents on the trademark owner, along with a notification for response within a designated timeframe.
  • The CNIPA will issue its decision within nine to 12 months of the date of receipt of the application.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

According to the Trademark Law, if a trademark is ineligible to function as trademark or if its registration was obtained by fraudulent or other illegitimate means, other entities or individuals may request the Trademark Review and Adjudication Board (TRAB) to invalidate the trademark.

If a trademark registration infringes another party's prior civil rights, that party or another interested party may, within five years of registration of the trademark, request TRAB to invalidate the trademark. If the registration was obtained in bad faith, the owner of a well-known trademark is not bound by the five-year restriction in seeking invalidation.

If a registered trademark has become the generic name of the goods for which it is used or has not been used for three consecutive years without a justifiable reason, any entity or individual may apply to the China Trademark Office (CTMO) for revocation of the registered trademark.

8.6 What is the procedure for appealing a decision cancelling a registration?

An interested party which is dissatisfied with a trademark office decision to cancel or invalidate a registered trademark may apply for a review before TRAB within 15 days of receipt of notice of the decision from the CTMO. If a party is dissatisfied with TRAB's decision, it may file suit before the people's court within 30 days of receipt of notice of the decision from TRAB.

Where other entities or individuals request TRAB to invalidate a registered trademark and are dissatisfied with its decision, they may file suit before the people's court within 30 days of receipt of notice of the decision.

8.6 What is the procedure for appealing a decision cancelling a registration?

Invalidation on absolute or relative grounds: If any party is dissatisfied with the invalidation decision, it can file a lawsuit with the Beijing IP Court within 30 days of receipt of the decision. The court will notify the other party in the trademark invalidation procedure to join the lawsuit as a third party.

Cancellation: If a party is dissatisfied with the cancellation decision, it can appeal before the Appeal Department of the CNIPA within 15 days of receipt of the decision.

The Appeal Department will issue its decision within nine to 12 months of the filing date of the appeal.

If a party is dissatisfied with the appeal decision, it can file a lawsuit with the Beijing IP Court within 30 days of receipt of the decision.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

No. Although the licensor must monitor the quality of the goods on which the licensee uses its registered trademark (Article 43 of the Trademark Law), this is not a requirement in order for the licence to be valid.

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

A licensor must supervise the quality of the goods for which the licensee uses its registered trademark, and the licensee must guarantee the quality of the goods on which the registered trademark is used.

If any person is authorised to use another party's registered trademark, the name of the licensee and the origin of the goods must be indicated on goods that bear the registered trademark.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

A licensor that licenses others to use its registered trademark must submit the trademark licence to the China Trademark Office (CTMO) for recordal and the CTMO shall publicise the licence accordingly. In case of failure to record, the licence cannot be enforced against a bona fide third party.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

No, it is not a mandatory to record the licence with the China National Intellectual Property Administration (CNIPA) or another governing body. However, a trademark licence that has not been recorded with the CNIPA is not effective against a bona fide third party (Article 43 of the Trademark Law).

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

A licensor will not lose its rights to a trademark if it fails to comply with its obligations under the licence, but it might face other legal risks and obligations. For example, if the goods of the licensee are of poor quality, the licensor's goodwill will be affected. If the goods cause damage to consumers, the licensor might bear joint liability.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

No.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

If a foreign trademark which is not registered in China has nonetheless become a well-known mark in mainland China, it can be protected under the Trademark Law.

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

Foreign trademarks that have not been registered in China can be enforced in the following circumstances.

Trademark Law: According to the Trademark Law, unregistered well-known trademarks are enforceable for identical or similar goods or services. In such enforcement cases, the trademark owner must submit a large volume of evidence to prove that the alleged trademark has acquired a significant reputation and popularity in China. For instance, the trademark fäÉ (LAFITE in Chinese) was successfully enforced in an infringement case as a foreign partyfs non-registered trademark.

Anti-Unfair Competition Law: Famous product names and service names are enforceable under the Anti-Unfair Competition Law. The defendant normally operates in the same or a highly related industry and improperly uses the plaintifffs product name or service name. WalMartfs famous brand SAMfS CLUB (in Chinese) was once recognised as a famous service name in China and protected against misleading use by third parties.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Yes. China is a member of both the Madrid Agreement and the Madrid Protocol.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Yes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.