Doing Business with China

Fan Weimin, Patent Attorney, CCPIT Patent & Trademark Law Office

In order to prepare for China's accession to the WTO and to improve intellectual property protection, China has revised its intellectual property laws and regulations in recent years . This chapter is intended to provide an overview of new trademark and patent application procedures and protection in China.

Trademark registration

Legislation

The Trademark Law of the PRC which had come into force 1 March 1983 was revised 22 February 1993, and came into force 1 July 1993. The Implementing Regulations of the Trademark Law of the PRC, which had come into force 13 January 1988, were revised 28 July 1993 and again 15 May 1995. On 27 October 2001 the 24th Session of the Standing Committee of the 9th National People's Congress approved the second revision of the Trademark Law and the revised Law came into force 1 December 2001. The Implementing Regulations of the Trademark Law of the PRC are being revised currently.

China has been a member of the World Intellectual Property Organization (WIPO) since 3 June 1980. On 19 March 1985 China acceded to the Paris Convention for the Protection of Industrial Property (Stockholm Act) and entered into the Madrid Agreement Concerning the International Registration of Marks on 4 October 1989. China also acceded to the Madrid Protocol on 1 December 1995.

Types of marks

Types of marks include trademarks, service marks, collective marks and certification marks.

Collective marks are defined as signs which are registered in the name of a group , an association or other organizations to be used by the members thereof in their commercial activities to indicate their membership in the organizations.

Certification marks describe the signs which are controlled by organizations capable of supervising certain 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 those goods or services.

Registrable marks

Registrable marks are any visually perceptible signs capable of distinguishing goods or services including words, devices, letters of an alphabet, numerals, three- dimensional signs and combinations of colours as well as the combination of such signs. Registrable marks shall be so distinctive as to be distinguishable , and shall not conflict with any prior right acquired by another person or entity.

Well-known trademarks

The Trademark Office is responsible for the determination and administration of well-known trademarks. The following factors shall be considered in determining a well-known trademark:

• reputation of the trademark in the relevant sector of the public;

• duration of use of the trademark;

• duration, degree and geographical scope of any publicity for the trademark;

• history of protection of the trademark as a well- known trademark;

• other factors contributing to the reputation of the trademark.

A trademark shall not be registered and its use shall be prohibited where the trademark constitutes a reproduction, an imitation , or a translation of a well-known trademark of another person not registered in China and is likely to:

• create confusion if the trademark is the subject of an application for registration regarding goods which are identical or similar to the goods to which the well-known trademark applies; or

• mislead the public and damage the interests of the owner of the registered well-known trademark, if the trademark is the subject of an application for registration regarding goods which are not identical or similar to the goods to which the well-known trademark applies.

Unregistrable marks

The following signs shall not be registered as trademarks:

• signs which consist exclusively of generic names , designs or models of the goods regarding which the trademark is used;

• signs which consist exclusively of direct indications of the quality, primary raw materials, functions, intended purposes, weight, quantity or other characteristics of the goods regarding which the trademark is used; or

• signs which are devoid of any distinctive character.

Signs mentioned in the preceding paragraphs may be registered as trademarks if they have acquired distinctive character through use and are capable of being readily identified and distinguished.

If a three-dimensional sign consists exclusively of the shape which results from the nature of the goods themselves , the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods, it shall not be registered as a trademark.

Other prohibited marks

The following signs shall not be used as trademarks:

• 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 ;

• those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries , except where a foreign state's government agrees to their use;

• those identical with or similar to the names, flags or emblems or names, of international intergovern- mental organizations, except where the organizations agree otherwise to their use or where it is not easy for their use to mislead the public;

• those identical with or similar to official signs and hallmarks, showing official control or warranty by them, except where their use is otherwise authorized;

• those identical with or similar to the symbols or names of the Red Cross or the Red Crescent;

• those of a discriminatory nature against any nationality ;

• those of an exaggerative and fraudulent nature in advertising goods;

• those detrimental to socialist morals or customs , or having other unhealthy influences.

The geographical name of an administrative division at or above the county level or a foreign geographical name well-known to the public shall not be used as a trademark, unless the geographical name has another meaning or the geographical name is used as a component part of a collective mark or a certification mark. Previously registered trademarks consisting of or containing geographical names shall continue to be valid.

Classification

China adopted on 1 November 1988 the International Classification of Goods and Services formulated pursuant to the Nice Convention.

Conventional priority

Conventional priority may be claimed within six months from the date of filing outside China. Priority documents must be submitted to the Trademark Office within three months from the date of filing in China.

First-to-file rule

The Trademark Law adopts a strict first-to-file rule for obtaining trademark rights. The first applicant to file an application for registration of a mark will pre-empt all other later applications for the same mark in the same class. Where an application to register a mark has been rejected due to its identity or similarity to a previously registered mark, evidence of prior use will not be helpful for the purpose of challenging the registration, unless the mark is proved to be 'well-known' under the Paris Convention.

Filing requirement

It is important to note that each application shall cover only one trademark in one class and an official fee of about US$US12 is levied for each item in excess of 10 in each class. Each application must include the following documents:

• Application form;

• Power of Attorney, signed by the applicant (the notarization and legalization of the Power of Attorney is generally not required);

• Five prints of the label, not exceeding 10 centimetres or being less than five centimetres in length and breadth. If the mark is in colour, one black and white label shall be submitted in addition to the five colour prints;

• Priority document, if priority is claimed.

Examination

Applications are examined regarding the formality and substance. Examination regarding the formality will include the correctness of the document and classification. Examination regarding the substance will include the registrability of the mark and possible conflict with prior rights.

Amendment of application

Amendment is only possible when required by the Trademark Office. At the stage of examination in substance, amendment may lead to the deletion of a part of the mark or of the specification.

Failure to make an amendment required by the Trademark Office may lead to refusal of the application.

Provisional refusal

The Trademark Office may provisionally refuse an application if, after examination, it is found that the mark is devoid of distinctiveness or identical with or similar to prior marks regarding identical or similar goods or services.

Publication

Applications that have passed examination will be published in the Trademark Gazette, which is published weekly for purposes of dispute.

Registration/duration/renewal

A mark will become registered if within the period of three months following its publication no opposition is filed against its registration, or the opposition filed is decided not to be justifiable.

A registration is valid for 10 years starting from the date of registration and can be renewed indefinitely for further 10-year periods each time.

Renewal applications shall be made within the six months before the expiry date or, subject to payment of an additional fee (official fee: about US$61), within the six months after the expiry date. Each renewal application shall include an application for renewal of trademark registration, a Power of Attorney and a copy of the 'Certificate of Trademark Registration'.

Madrid registrations

An international registration in the PRC under the Madrid Agreement or Protocol can be effected by notifying the Madrid Union Office to add the PRC to the list of registration countries for a particular mark. Under the Madrid Agreement or Protocol the Trademark Office has the right to reject trademarks not conforming with the trademark law.

Scope of protection

A registered mark is protected regarding the goods or services registered. In particular any of the following acts shall be an infringement upon a registered mark:

• to use a trademark that is identical with or similar to a registered trademark in relation to identical or similar goods without the authorization of the owner of the registered trademark;

• to knowingly sell goods that are in infringement of the exclusive right to use a registered trademark;

• to counterfeit or make without authorization, representations of a registered trademark of another person or to sell such representations;

• to change a registered trademark and put goods bearing the changed trademark on the market without authorization of the owner of the registered trademark;

• to cause, in any other respect, prejudice to the exclusive right of another person to use a registered trademark.

Appeal

The provisional refusal of an application may be appealed against to the Trademark Review and Adjudication Board (TRAB) within 15 days from the receipt of notification.

Opposition

Within three months from the date of publication anyone can oppose an accepted trademark. The Trademark Office shall make a written decision, which can be appealed against to the Trademark Review and Adjudication Board, if any party is not satisfied with the decision.

Cancellation or dispute

Where a registered trademark belongs to the category of unregistrable marks or other prohibited marks, or has been acquired by fraud or any other unfair means, any other organization or individual may request the Trademark Review and Adjudication Board to make a judgment to cancel such a registered trademark.

Where a registered trademark:

• constitutes a reproduction, an imitation or a translation of a well-known trademark of another person not registered in China in respect of identical or similar goods, and is likely to create confusion;

• constitutes a reproduction, an imitation or a translation of a well-known trademark of another person already registered in China in respect of non-identical or dissimilar goods and is likely to mislead the public and damage the interests of the owner of the registered well-known trademark;

• has been acquired by the agent or representative of the original trademark owner without authorization where the owner objects;

• consists of or contains a geographical indication regarding goods not originating in the region indicated to such an extent as to mislead the public (registrations made in good faith shall continue to be valid);

• infringes the existing earlier right of another person, with the intent of registering a trademark which is used by another person and enjoys a certain reputation;

the owner of the trademark or any interested party may, within five years from the date of registration, request the Trademark Review and Adjudication Board to make a judgment to cancel the registered trademark. Where the registration has been made in bad faith the owner of a well-known trademark shall not be bound by the five-year time limit for filing a request.

In addition to the situations defined in the preceding two paragraphs, any person disputing a registered trademark may, within five years from the date of registration, apply to the Trademark Review and Adjudication Board for adjudication.

Application for cancellation may be filed at any time where the registered trademark has ceased to be used for three consecutive years.

The power of the Board

Any party who is dissatisfied with the decision of the Trademark Review and Adjudication Board may, within 30 days from receipt of the notification, institute legal proceedings with the People's Court.

Recording change of name/address/assignment/ licence

All changes in registration details including name and/ or address shall be recorded with the Trademark Office.

When applying for the assignment of a registered trademark, both the assignor and assignee shall send jointly an 'Application for Assignment of Registered Trademark' to the Trademark Office accompanied by the original 'Certificate of Trademark Registration'. The assignee shall perform the formalities required in applying for the assignment of a registered trademark. An assignment is effective only when recorded with the Trademark Office.

A licence contract is to be recorded with the Trademark Office within three months following the execution of such a contract.

Use requirement

A registration is subject to cancellation if not in use for three consecutive years. Use of a trademark includes its use on goods, packages or containers, or in trading documents, and use in advertising, exhibition or other business activities.

Marking

Marking is compulsory for a registered trademark; however, false marking will result in a fine of up to 20 per cent of the sales income of such falsely marked products.

Status of unregistered marks

An unregistered mark can be used; however, an unregistered trademark is not protected unless it is recognized as well-known.

Registering the Chinese version for a Latin mark

Registering the Chinese version for a Latin mark is necessary if the Chinese version is to be used. Even if it is not to be used, registration of its Chinese version is also necessary if the Latin mark has de facto obtained its Chinese version that is well-accepted by consumers, especially when the mark was coined.

Representation

Any foreign nationals intending to apply for trademark registrations or to handle other trademark matters in China shall be represented by an agent licensed by the Chinese government.