Registration and useOwnership of marks
Who may apply for registration?
Any natural person, legal entity or other organisation which needs to acquire the exclusive right to use a trademark for its good or service may apply for registration.Scope of trademark
What may and may not be protected and registered as a trademark?
In China, any sign that distinguishes the goods of a natural person, legal entity or other organisation from those of others, including any word, graphic, letter, number, three-dimensional sign, colour combination, sound and combination thereof, may be registered as a trademark and be protected. According to the Trademark Law, 'registered trademarks' refer to trademarks that have been approved by and registered with the Trademark Office, including goods marks, service marks, collective marks and certification marks. Unlike those mentioned above, smell cannot be registered and protected as a trademark in China, although in some countries it can be registered and protected as a trademark.
Aside from that, the following signs may not be used as registered trademarks:
- those identical to, or similar to, a state name, national flag, national emblem, national anthem, military flag, army emblem, military songs, medals and others of China; and those identical with the names and signs of central state organisations, names of the specific locations thereof, or those identical to the names or device of landmark buildings;
- those identical to, or similar to, state names, national flags, national emblems or military flags of foreign countries, unless permitted by the government of the country;
- those identical with, or similar to, the names, flags, or emblems of international inter-governmental organisations, unless permitted by the organisation concerned or unlikely to mislead the public;
- those identical to, or similar to, an official sign or inspection seal that indicates control and guarantee, unless it is authorised;
- those identical to, or similar to, the names or signs of the International Red Cross and Red Crescent;
- those of discrimination against any race;
- those of fraud that may easily mislead the public as to the product's characteristics such as the quality of goods, or place of production; and
- those detrimental to socialist morals or customs, or having other unhealthy influences.
Besides, the geographical names of administrative divisions at or above the county level and foreign geographical names well known to the public shall not be used as trademarks, except for geographical names that contain other meanings or constitute parts of a collective mark or certification mark. Where a trademark bearing any of the above-mentioned geographical names has been registered, it shall continue to be valid.
Moreover, the following signs shall not be registered as trademarks:
- marks that only bear the generic names, devices or model numbers of the goods;
- marks that simply indicate the quality, main raw materials, function, use, weight, quantity or other features of the goods; and
- marks that lack distinctive characteristics.
Can trademark rights be established without registration?
In general, trademark rights can be protected in China only when registered in China. As article 3 of the Trademark Law stipulates, 'the registrant of a trademark enjoys the exclusive right to use the trademark, which shall be protected by law'.
However, unregistered trademarks can be protected under several circumstances, mainly according to the Trademark Law and the Anti-Unfair Competition Law (revised in 2019), based on stipulations that prohibit:
- misleading use of marks that are identical or similar to the name, packaging or decoration of another business’s commodity which has influenced to a certain extent or which may create misleading relationship with that business; and
- malicious application for registration of someone else’ trademarks.
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
If a famous foreign trademark is neither registered nor used in China, it can hardly be protected in China. If it is desired to protect in China, it may either be registered, or recognised as a 'well-known trademark' either by the Trademark Office of National Intellectual Property Administration, or pursuant to a court judgment. In China, if it is recognised as a well-known trademark, comparatively speaking, it might be better protected. To get recognised, the trademark shall be proved to be widely known by the relevant public in China, with evidence solid enough to at least prove that the trademark:
- is well known to the general public;
- has been continuously used in China for at least five years if not yet registered, or at least three years after being registered or continuously used for no less than five years;
- is continuously and widely promoted and publicised;
- is protected as a well-known trademark in China or in other countries and areas;
- is well known for its sales, marketing shares, net profit, tax payment, sales territory of primary commodities using the trademark in the last three years; and
- has other documents and materials that could prove the popularity of the trademark.
It needs to be mentioned that, in practice, 'well-known trademark' needs to be reviewed and recognised on a case-by-case basis, and there is much more uncertainty than before; therefore, protection provided by this means is less certain than the trademark registration method.The benefits of registration
What are the benefits of registration?
Only trademarks registered in China can be protected in China (see question 6), although there are several rare exceptions; therefore, the biggest benefit of registration is protection.
In case the registered trademark is being infringed, the registrant or the party with an interest (such as an authorised trademark licensee) may apply for administrative remedy such as a customs injunction, or seek judicial remedies such as filing a civil lawsuit based on civil cause of action or based on a criminal offence. The details, such as major requirements to be met and procedures to be followed, can be found in articles 60 and 61 of the Trademark Law, and article 12 of the Regulations on the Customs Protection of Intellectual Property Rights. In practice, the customs injunction is very helpful for the trademark registrant, who may apply to the customs office for impoundment of the infringing goods if it is discovered that the suspected infringing goods are about to be exported.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
The important documents that usually need to be submitted for trademark registration application are as follows:
- the certificate of corporate good standing;
- the trademark registration application form;
- power of attorney; and
- the trademark's design.
In China, a trademark application shall be made according to the published classification table of commodities and services, with sub-classifications identified and included.
Online application for trademark registration is available according to the Interim Provisions on Online Applications for Trademark Registration. The registered trademark will be granted with an electronic trademark registration certificate in addition to the hard copy certificate.
Trademark searches are available before filing, which can be carried out on the following official website operated by the Trademark Office of National Intellectual Property Administration: wsjs.saic.gov.cn, which is self-explanatory with the procedures that need to be followed.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
If all documents submitted are satisfactory to the Trademark Office of National Intellectual Property Administration, with all procedures gone through smoothly and successfully, without additional procedures such as review of refused application, invalidation, cancellation, then it will usually take at least eight months to obtain a trademark registration. According to the law, the Trademark Office shall complete the examination of the application documents within nine months upon receipt of the complete application. The cost for a trademark registration may vary, depending on how many classes and sub-classes of commodities or services it desires to register, and whether it involves any additional procedure such as review of refused application, invalidation or cancellation, which will definitely increase the time needed and the fees incurred. The trademark registration formally come into effect on the date when the trademark registration is publicised; usually it will be the date following the publication date.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
The Nice Agreement is followed by China, which is the international classification system. China uses multi-class applications, and the cost varies owing to the reasons given in question 10.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The Trademark Office will follow the Standards for Trademark Review and Examination to review the application and determine whether or not to grant a trademark registration. The examination will be carried out in form and substance. Each application will be examined for potential conflicts with the other trademarks. A letter of consent might be helpful if there is an objection based on a third-party mark; however, it will not be sufficient in most cases, and it also depends on who sends the letter of consent.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
There is no legal obligatory requirement for claiming or proving use of a trademark or service mark before the trademark is registered in China. Foreign registration may grant right of priority, when an applicant for trademark registration files an application for trademark registration in China within six months of filing the first application for registering the same trademark for the same goods in a foreign country, the applicant may have priority in accordance with any agreement concluded by and between China and the foreign country concerned, or with the international treaty to which both countries are parties, or on the basis of the principle of reciprocity.
Although a trademark can be registered without prior use, if, however, a registered trademark has become the generic name of the designated goods or stays unused for three consecutive years without due cause, any entity or individual may apply to the Trademark Office for revoking this trademark, and the Office shall make decision on it within nine months of receipt of the application.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
In China, both ® and ㊟ can be used to indicate that a trademark is a registered trademark, the former of which is an encircled letter R and the latter is the Chinese character zhu. The mark of registration shall be positioned at the upper right corner or lower right corner of the relevant trademark. The registered trademark may be marked with the words 'registered trademark' or the mark of registration as indicated above, either on the commodity, the commodity packaging, the instruction manual or its other accessories.
According to the Chinese laws, it is not mandatory to mark the registered trademark with ® or ㊟ to indicate it is registered, and trademark registration is not mandatory for all commodities or services. However, there are a few commodities where it is legally mandatory to use registered trademarks, which shall not be manufactured or marketed before the trademarks are registered, such as tobacco products like cigarettes, cigars and packed cut tobacco, and pharmaceutical products with the exception of traditional Chinese medicinal materials.
In practice, it is encouraged to use such words or symbols to indicate that the trademarks are registered trademarks, not only for the purpose of better marketing and promotion of image, but also to prevent them being infringed. They can also serve the purpose of evidence of use, which can prevent them being applied for revoked for not being used for three consecutive years.Appealing a denied application
Is there an appeal process if the application is denied?
Yes. If an application is denied, the Trademark Office shall notify the applicant in writing of the result. If dissatisfied with the denial decision, the applicant may apply to the Trademark Review and Adjudication Board for review within 15 days upon receipt of the denial notice. The said Board shall make a ruling within nine months upon receipt of the application and notify the applicant in writing. If it is necessary to prolong the review period, it can be extended by three months. If dissatisfied with the ruling granted by the Trademark Review and Adjudication Board, the party concerned may appeal to a people’s court within 30 days of receipt of the notice.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Yes. Applications are published for public opposition, any third party may oppose an application prior to registration or seek cancellation or revocation after registration. For example, for a trademark that is not yet registered but is published after a preliminary examination, any prior owner or interested party may raise an objection, within three months from the date of publication, to the Trade Office against registration of this trademark. And for a registered trademark, if it is found to be registered by having violated laws, or by fraud or other improper means, or maliciously registered, either without authorisation or by a malicious agent or representative under its own name without awareness of the client, such registration can be applied to the Trademark Review and Adjudication Board for a ruling to make it annulled or revoked.
If it is neither registered nor recognised as a 'well-known trademark', a foreign trademark owner can be difficult to oppose a bad-faith application for its mark. Government charge for a third-party opposition or cancellation proceeding is 500 yuan per class, per trademark; however, total costs may vary as the agent fee or legal fees incurred can vary significantly.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
The period of validity for a registered trademark is 10 years, starting from the day the registration is granted. This period can be extended upon expiry, if an extension is applied for. To make the trademark registration valid, it needs to be used in practice; if a registered trademark is not in use for three consecutive years, anyone can submit an application, applying to annul or revoked it. According to the Trademark Law, use of trademarks refers to such activities as using trademarks on goods, goods packaging or containers and goods transaction documents, or using trademarks in advertising, exhibits and other commercial events to identify the sources thereof. Therefore, to prove use of the registered trademarks, it is necessary to collect and provide solid evidence of such.Surrender
What is the procedure for surrendering a trademark registration?
To surrender a registered trademark or deregister a registration of certain designated commodities, a trademark registrant shall file an application with the Trademark Office and return the original Certificate of Trademark Registration. Upon being approved by the Trademark Office, the exclusive right to use the registered trademark or to use it on certain designated commodities will be terminated.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Trademarks can be protected under other IP rights, such as copyright. If the plaintiff files a lawsuit on the ground that the words, figures, etc, used for someone else's trademark infringe the plaintiff's prior rights such as copyright with solid evidence, then the people’s court shall accept the lawsuit filing.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
Infringement is infringement, online or off-line. In general, laws and practices for trademarks online protection are the same as such for offline protection. However, it is true that to claim against online infringement, there can be more challenges and difficulties for the trademark owners or interested parties as the infringement can be more anonymous, so it could be costlier and more time consuming to identify the infringing party, to collect and substitute evidence and to prove losses and damage caused.
For domain name online protection in China, there are several specific laws, namely:
- the Uniform Domain-Name Dispute-Resolution Policy;
- the China Internet Network Information Center (CNNIC) ccTLD Dispute Resolution Policy Rules and its Supplemental Rules;
- the Rules for the Implementation of National Top-level Domain Name Registration;
- the CNNIC Measures for Resolving Domain Name Disputes;
- the Administrative Measures for Internet Domain Names; and
- the Implementation Rules of CNNIC for Domain Name Registration.