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鉴诚视角

Basic profile of Chinese trademark law and practice

Basic profile of Chinese trademark law and practice

General

General

A. Rights Afforded by Registration

Registration is mandatory to establish rights to a trademark; this is a "first to file" jurisdiction.

Use of an unregistered mark for the following specified goods only is not legal:

  • tobacco products.

No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

 

B. Time Frame for Obtaining Registration

The approximate time from application to registration (for a regular prosecution, without opposition) is: 15 months.

 

C. Advantages of Registration

The advantages of registering a trademark include the following:

  • it provides prima facie evidence of ownership and validity;
  • it provides national/regional protection;
  • it allows use of "Registered Trademark" or other suitable abbreviations to demonstrate ownership of the trademark;
  • it helps to deter others from unlawfully using the trademark;
  • it provides a defense to infringement;
  • enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
  • it encourages licensees and provides the opportunity to generate royalties through licensing.
  • The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in China.

Pre-Filing

Pre-Filing

A. Registrable Trademarks

The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:

  • words;
  • names;
  • devices;
  • certain three-dimensional shapes;
  • colors;
  • slogans;
  • sounds ;
  • trade dress/get-up (only trade dress/get-up with distinctive elements).
  • combinations of the above elements.

The special requirements for the registration of three-dimensional shapes are: none, but the common shape of products is not registrable.

There are no special requirements for the registration of colors.

The special requirements for the registration of sounds are: Sounds were not acceptable until May 1, 2014. The sounds must be recorded on a medium and should not be too long.

The special requirements for the registration of trade dress are: must have distinctive elements.

Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

In addition to regular trademark registrations, the following types of trademarks are registrable:

  • collective marks;
  • certification marks;
  • well-known marks;
  • service marks.

Retail services (for pharmaceutical, veterinary and sanitary preparations) are registrable provided that the nature of the retail services is clearly identified.

The following are not registrable as trademarks:

  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags or symbols of states, nations, regions, or of international organizations;
  • non-distinctive trademarks absent a showing of acquired distinctiveness (secondary meaning);
  • marks that function principally as surnames;
  • marks that function principally as geographic location names (but not geographical indications or appellations of origin);
  • marks that may mislead consumers.

Geographical indications (GIs) are protected in this jurisdiction.

GIs are protected by way of:

  • trademark laws in the form of collective marks or certification marks.

The following products or categories are subject to GI protection in this jurisdiction: There is no specific restriction as to what products or categories are subject to GI protection.

 

B. Searching

While conducting a private pre-filing search is not mandatory, it is recommended in that it can:

  • save the applicant the time, effort and cost entailed in developing, adopting and applying to register a trademark in which someone else has prior rights.

The national office is accessible online at the following URL: http://sbj.saic.gov.cn.

The official register can be searched online.

 

C. Use

An applicant benefits from pre-filing use of a trademark.

The benefits of pre-filing use are:

  • Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the grounds of non-distinctiveness.
  • minimal. Trademark rights are largely established through registration. The advantage of earlier use of a trademark may be effective where applications are filed on the same day for identical or similar trademarks for the same or similar goods or services by two or more applicants. The preliminary approval (after examination) and the publication shall be made for the trademark that was the earliest used, and the applications of the others shall be refused and their trademarks shall not be published.

When a mark is not registered, use of that mark may provide the following benefits:

  • Courts may protect unregistered trademarks in some exceptional cases.
  • Special protection against infringement may be available for a well-known trademark that is not registered.
  • Protection against infringement may be available for trademarks with substantial and longstanding use that are not registered. However, protection against infringement of an unregistered trademark with longstanding use is limited if the mark is not well known.

Famous and/or well-known marks are protected via the following mechanism(s):

  • an administrative process;
  • a determination by the court resulting from an action for infringement;
  • a determination by the court (other than one resulting from an action for infringement).

 

D. International Treaties

China is a member of the following international treaties relating to intellectual property:

  • Paris Convention;
  • Singapore Treaty;
  • Madrid Agreement;
  • Madrid Protocol;
  • Nice Agreement.

Filing

Filing

A. Requirements

If the applicant is not domiciled in this jurisdiction, it is not necessary to provide a local address for service.

Joint applicants are permitted in this jurisdiction.

Neither actual use nor intent to use is required for application.

The following information is required to complete an application:

  • name and address of the applicant;
  • state or country of incorporation;
  • proof of citizenship;
  • description of trademark;
  • specimen of trademark (an actual article (or photograph of such article) showing a mark as used on or in connection with the goods or services claimed in an application or registration);
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • power of attorney;
  • official filing fee;
  • business license; certificate of incorporation.

While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:

  • name and address of the applicant;
  • state or country of incorporation;
  • proof of citizenship;
  • description of trademark;
  • specimen of trademark (an actual article (or photograph of such article) showing a mark as used on or in connection with the goods or services claimed in an application or registration);
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • power of attorney;
  • official filing fee.

The list of goods and services in this jurisdiction may specify:

  • a list of the common commercial names for the specific goods or services of interest.

The following number of specimens of the trademark must be submitted: two, one of which must be attached to the application form.

In this jurisdiction, the following type of registration is available:

  • national;
  • international.

This jurisdiction is a member of both the Madrid Protocol and the Madrid Agreement and may be designated in international applications.

This country is not a member of the European Union; a European Union Trade Mark is not effective in this jurisdiction.

No multinational regional registrations are available in this jurisdiction.

An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid Agreement and Protocol.)

Applications can be filed online at the following URL: http://sbj.saic.gov.cn.

Applications must be filed through a local trademark agency. Applicants are not allowed to file trademark applications online by themselves.

The official file cannot be accessed online. The official file is not open to the public, but basic application/registration information, such as name, address, goods, mark, and agent, is available online.

Applications are officially searched as to prior trademarks. This takes approximately the following length of time: four months or more.

 

B. Priority

If an applicant's home country is a member of the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)

An International Registration can be based on a national application or registration in this jurisdiction.

 

C. Classification

This jurisdiction uses the Nice Classification System.

span class="text_static">If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services

For a multi-class application, the applicant must pay class fees on a per-class basis.

 

An application to register a trademark may be filed directly in this jurisdiction by:

  • a trademark representative/attorney/agent, even if not a citizen of or domiciled the jurisdiction.

Application

Application

A. Publication

The filing particulars of an application are made available to the public.

The filing particulars are made available:

  • through publication and online.

The following application details are made available to the public:

  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • citizenship of applicant;
  • application number;
  • application date;
  • goods/services;
  • priority claim information (only the priority date is made available to the public);
  • representation of trademark.

 

B. Examination

Applications are examined in respect of:

  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • clarity: i.e., that descriptions are clear, and are understandable;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark of such a nature as to deceive the public (for instance as to the nature, quality or geographic origins of the goods or services);
  • conflict with prior an earlier registration, prior filed application or earlier unregistered rights resulting from an official search;
  • the existence of any conflict with the PRC Trademark Law.

If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:

  • The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.
  • This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive). In practice, it is not mandatory to clearly indicate a disclaimer to the element that is not distinctive in the application form. The Trademark Office will automatically consider those non-distinctive elements disclaimed.

The order of the application process is as follows:

  • examination, publication, registration.

 

C. Prosecution

Accelerated examination may not be requested.

The following rights are established by a pending application:

  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be cited in official examination against a subsequent (later filed) conflicting application;
  • the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application.

 

D. Opposition

Opposition is available.

Opposition is conducted pre-grant.

The following can be grounds for opposition:

  • relative grounds (based on proprietary rights, e.g., conflicting prior registration);
  • absolute grounds (based on non-proprietary rights, e.g., descriptiveness, non-distinctiveness);
  • bad faith (e.g., deceptiveness, disparagement);
  • breach of copyright;
  • rights under Article 6bis (notorious or well-known mark) of the Paris Convention;
  • rights under Article 6septies (registration in the name of the agent or other representative of the proprietor of the mark) of the Paris Convention;
  • rights in a company name;
  • rights under Article 8 (trade names) of the Paris Convention;
  • registered design rights;
  • rights in a personal name;
  • unauthorized use of specially protected emblems or national insignia;
  • any reasonable grounds (e.g., conflict with another's prior-used mark with certain established fame and reputation for identical or similar goods/services).

An application is published for opposition purposes after formal examination of the application.

The opposition period begins on the following date: publication date.

The opposition period ends on the following date: three months after the publication date.

The following parties may oppose an application:

  • any interested party, including the owner of an earlier right, a licensee, or, anyone, if the opposed mark is considered to violate stipulations under the law.

Oppositions cannot be filed online.

 

E. Proof of Use

Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

Assignment and Licensing of an Application

Assignment and Licensing of an Application

A. Assignment

An application can be assigned.

An assignment of an application must be for the entire territory covered by the application.

An assignment of an application must be for all the goods or services listed in the application.

Goodwill need not be included in an assignment of an application.

A written assignment for an application requires:

  • name of the assignor;
  • address of the assignor;
  • citizenship of the assignor;
  • name of the assignee;
  • address of the assignee;
  • citizenship of the assignee;
  • details of the trademark being assigned;
  • the territory being assigned;
  • signature by the assignor;
  • signature by the assignee;
  • application/registration number;
  • classification.

Legal verification of a written assignment document is not required.

An assignment of an application must be recorded to be effective.

 

B. Licensing

An application can be licensed.

A license of an application can be made for a portion of the territory covered by the application.

A license of an application can be for some of the goods or services listed in the application.

A license of an application can be exclusive (only one licensee, with the owner excluded).

A license of an application can be sole (only one licensee and the owner).

A license of an application can be non-exclusive (multiple licensees and the owner).

Use, by a related company, of a mark that is the subject of an application need not be licensed.

A license of an application can be made with a time limitation.

A license document for an application requires:

  • the name of the licensor;
  • the address of the licensor;
  • the citizenship of the licensor;
  • the name of the licensee;
  • the address of the licensee;
  • the citizenship of the licensee;
  • details of the trademark to be licensed;
  • the commencement date of the license;
  • the term of the license;
  • the territory of the license;
  • the goods/services being licensed;
  • quality control provisions;
  • signature by the licensor;
  • signature by the licensee;
  • express permission to sublicense, if appropriate.
  • A pending application can be licensed but not available for recordation with the China Trademark Office.

Legal verification of a written license agreement is not required.

A license of an application need not be recorded to be effective.

Registration

Registration

A. Requirements

A fee is not required for issuance of the registration.

The following documentation is required for issuance of the registration:

none.

 

B. Rights

The following rights are established by registration:

  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to bring a cancellation action against a subsequent conflicting registration;
  • the right to sue for infringement against confusingly similar third party trademark use;
  • the right to license other third parties to use the trademark;
  • the right to apply for seizure by customs authorities for importation of counterfeit goods;
  • the right to obtain damages for infringement.

The Roman alphabet is not used to represent the official language(s) of this jurisdiction.

Registration of a mark in the Roman alphabet is not sufficient to protect the transliterated version of that mark; the transliterated version would have to be registered separately.

A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:

  • counting from the date of registration of the mark: five years, unless the mark was obtained in bad faith or is in conflict with the interest of a well-known mark.

The territorial limit of registration is: mainland China.

 

C. Term

The initial term of a registration is:

  • ten years.

The beginning of the term of a registration is calculated from the:

  • registration date.

 

D. Marking Requirements

Marking is not compulsory for registered trademarks, but is advisable because: it may notify a third party of your exclusive right to use the mark.

Any marking should be in the form(s) mentioned below. Please consult with your local attorney in case of doubt.

  • TM;
  • SM;
  • ®.

The use of ® is legally recognized.

The legal consequences of false or misleading marking are: Misrepresentation of an unregistered trademark as a registered one shall be ordered to be rectified within a specified period and a fine shall be imposed.

Assignment and Licensing of a Registration

Assignment and Licensing of a Registration

A. Assignment

A registration can be assigned.

An assignment of a registration must be for the entire territory covered by the registration.

An assignment of a registration must be for all the goods or services listed in the registration.

Goodwill need not be included in an assignment of a registration.

An assignment document for a registration requires:

  • the name of the assignor;
  • the address of the assignor;
  • the citizenship of the assignor;
  • the name of the assignee;
  • the address of the assignee;
  • the citizenship of the assignee;
  • details of the trademark being assigned;
  • the territory being assigned;
  • signature by the assignor;
  • signature by the assignee;
  • registration number;
  • classification.

Legal verification of a written assignment document is not required.

An assignment of a registration must be recorded to be effective.

 

B. Licensing

A registration can be licensed.

In this jurisdiction recordation of a registered trademark user is the sole means of registering the rights of another to use the mark.

A license of a registration can be made for a portion of the territory covered by the registration.

A license of a registration can be for all or some of the goods or services listed in the registration.

A license of a registration can be exclusive (only one licensee, with the owner excluded).

A license of a registration can be sole (only one licensee and the owner).

A license of a registration can be non-exclusive (multiple licensees and the owner).

Use, by a related company, of a registered mark need not be licensed.

A license of a registration can be made with or without a time limitation.

A license document for a registration requires:

  • the name of the licensor;
  • the address of the licensor;
  • the citizenship of the licensor;
  • the name of the licensee;
  • the address of the licensee;
  • the citizenship of the licensee;
  • details of the trademark to be licensed;
  • the goods and services being licensed;
  • the commencement date of the license;
  • the term of the license;
  • the territory of the license;
  • quality control provisions;
  • simple signature by the licensor (see below for execution requirements);
  • simple signature by the licensee (see below for execution requirements);
  • legal documents showing the current legal status of both the licensor and the licensee are recommended for they might be required by the authority.

Legal verification of a written license agreement is not required.

A license of a registration need not be recorded, but could help in enforcement, to demonstrate use of the mark.

A license of a registration need not be recorded.

A license of a registration need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

The license for a renewed registration must be re-recorded.

Post-Registration

Post-Registration

A. Use Requirements

Attack on the ground of non-use is available.

To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time: If a registered trademark is not used in three consecutive years after registration, it would be vulnerable to a non-use cancellation action. The duration of non-use of a registered trademark is three consecutive years, calculated by dating back three years from the date of receipt of "Application for Cancellation of Registered Trademark Not Having been Used for Three Consecutive Years" by the Chinese Trademark Office.

To satisfy the use requirement, the amount of use:

  • can be minimal.

Use of the trademark must occur in:

  • this jurisdiction.

The consequences of a trademark’s not being used are as follows: cancellation of the registration of the mark.

Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

An action for non-use of a trademark can be brought by:

  • any interested third party.

Non-use can be excused under the following circumstances:

  • other government policies;
  • force majeure.

Resumption of use after non-use for the prescribed period (see above) does not cure non-use.

Use of a registered trademark in a modified form would affect the enforceability of the registration and is not allowed.

Amendment of a registration to conform to a modified form is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

 

B. Cancellation

Cancellation is available against registrations.

The following can be grounds for cancellation:

  • the mark is descriptive;
  • the mark is misleading and/or deceptive;
  • the mark lacks distinctiveness;
  • the mark is generic;
  • the mark consists of a geographical indication;
  • the mark is functional;
  • the mark is against public policy or principles of morality;
  • the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;
  • the mark includes a badge or emblem of particular public interest;
  • the mark is used in a misleading manner;
  • the mark is prohibited in this jurisdiction;
  • the application for or registration of the mark was made in bad faith;
  • registrant’s breach of a technical provision of the law;
  • the registration was obtained by fraud.
  • See Section V.G. Use Requirements.

There is a deadline for bringing a cancellation action, unless the registration of the mark was obtained in an unlawful manner or violates the prohibitive articles of the Trademark Law. Please consult a local attorney.

The cancellation period begins on the following date: registration date.

The following parties may bring a cancellation action:

  • any interested party;
  • the owner of an earlier right;
  • a licensee;
  • if the mark is against public interest, anyone.

Cancellation actions cannot be filed online.

 

C. Renewal

The following documentation is required for renewal:

  • power of attorney;
  • copy of the certificate of registration;
  • certification of incorporation of the registrant.

The first renewal date of a registration is:

  • 10 years from the registration grant date.

Subsequent renewals last for the following period of time:

  • 10 years from the renewal date of the registration.

The renewal pre-payment period is:

  • no more than the following number of months before the renewal date: 12 months.

There is a grace period for renewing registrations once the renewal date has expired.

The grace period after the renewal date has expired is:

  • 6 months.

The penalty for late renewal is:

  • a fine.

Renewal cannot be effected online.

Customs Recordation

Customs Recordation

Trademarks that are registered in this jurisdiction can be recorded with the customs authority, the name of which is: General Administration of Customs.

Recordation with the customs authority can be accomplished online at the following URL: http://www.haiguanbeian.com/.

Domain Names

Domain Names

A domain name may be protected as a trademark only if the domain name is not merely a Web address but is used or intended to be used in connection with goods or services. At present, domain names are protected under the Law of the People's Republic of China (PRC) for Countering Unfair Competition in the People’s Court, and the registration of domain names as trademarks may be beneficial to the protection of domain names.

The following approved registrars can register a domain name in this jurisdiction: HiChina Web Solutions (Hong Kong) Limited; 35 Technology Co., Ltd.; Beijing Innovative Linkage Technology Ltd. dba dns.com.cn; Bizcn.com, Inc.; Todaynic.com, Inc.; Xiamen ChinaSource Internet Service Co., Ltd.; Xiamen eName Network Technology Corporation Limited dba eName Corp; Xin Net Technology Corporation.

Availability of domain names in this jurisdiction can be searched through the following website(s): www.net.cn; www.35.com; www.dns.com.cn; www.bizcn.com; todaynic.com; www.zzy.cn; www.ename.cn; www.xinnet.com.

The Country Code Top-Level Domain (ccTLD) for this jurisdiction is: .cn.

To obtain a domain name under the ccTLD in this jurisdiction, the following is required:

  • a local address;
  • local business activity;
  • have a local office in China because it is required to submit a certificate of incorporation for recordation. If a foreigner or a foreign company only has a contact address (without an officially approved office in China), then it is not allowed to register a domain name under the ccTLD.

Domain name registrations can be assigned.

Domain name registrations can be licensed.

A domain name registration may be contested in this jurisdiction through the following mechanisms:

  • a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed though the following locally approved domain-dispute resolution service provider(s) in the jurisdiction: Domain Name Dispute Resolution Center of China International Economic and Trade Arbitration Commission (CIETAC).

One may institute a UDRP proceeding with the following ICANN-approved domain-dispute resolution providers:

  • WIPO (World Intellectual Property Organization);
  • Asian Domain Name Dispute Resolution Centre;
  • National Arbitration Forum.

If a registration lapses due to failure to renew, it can be revived or restored in the following way: It can be revived or restored in 60 days from the expired date.

The application to register a domain name as a trademark will be examined for conflicts with prior trademarks.

An earlier-filed domain name registration might create an obstacle to a later-filed trademark registration application filed by another. Consult a local agent.

In general, the courts do not apply the same principles for domain name disputes as are applied for trademark disputes. The following unique considerations are of particular note: Slight differences in domain names shall be sufficient to distinguish them. The following considerations are of particular note: (a) if the domain name has been registered in bad faith; (b) if the domain name has not been put into use for long time; (c) if the registrant has used others' legally obtained names or marks registered as its own domain names to prevent others from promoting the same online; (d) if the registrant has tried to ruin others' business interest or desires to sell the domain names for improper interest.

最后修改于 2019年10月25日
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