Legislation
The Trademark Law is enacted to improve the administration of trademarks, protect the exclusive right to use a trademark, and encourage producers and traders to guarantee the quality of their goods and services and maintain the reputation of their trademarks, with a view to protecting the interests of consumers, producers and traders and promoting the development of the socialist market economy.
Trademark Law
August 23, 1982: Adopted by the Standing Committee of the National People's Congress (“the NPC Standing Committee”);
February 22, 1993: Amended for the first time by the NPC Standing Committee;
October 27, 2001: Amended for the second time by the NPC Standing Committee;
August 30, 2013: Amended for the third time by the NPC Standing Committee;
April 23, 2019: Amended for the fourth time by the NPC Standing Committee.
Implementing Regulations of the Trademark Law
August 3, 2002: Promulgated by the State Council;
April 29, 2014: Amended by the State Council.
Conventions
China became a member of the Convention Establishing the World Intellectual Property Organization on June 4, 1980, the Paris Convention for the Protection of Industrial Property on March 19, 1985, the Madrid Agreement Concerning the International Registration of Marks on October 4, 1989, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks on August 9, 1994, the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks on December 1, 1995 and the Marrakesh Agreement Establishing the World Trade Organization on December 11, 2001.
Trademark Administration
The Trademark Office of the China National Intellectual Property Administration (the CNIPA) is responsible for the registration and administration of trademarks in China, as well as the settlement of disputes relating to trademarks.
The CNIPA is responsible for conducting the operational guidance and policing of trademark enforcement, including formulating and guiding standards of trademark infringement and enforcement.
State Administration for Market Regulation is responsible for the organization and overall guidance of trademark enforcement.
Types of Trademarks
There are four types of registered trademarks in China: trademarks for goods, service marks, collective marks and certification marks.
A trademark for goods means a distinctive sign used on goods to distinguish the origin of the goods produced, manufactured, processed, selected or marketed.
A service mark means a distinctive sign used for services to distinguish the provider of the services.
A collective mark means a distinctive sign registered in the name of a group, association or other organization for the members thereof to use in their commercial activities as indications of their membership in the organization.
A certification mark means a distinctive sign controlled by an organization capable of supervising certain goods or services, and used by entities or individuals outside the organizations for their goods or services to certify the origin, material, mode of manufacture, quality or other characteristics of the goods or services.
Provisions in the following text concerning trademarks for goods will also apply to service marks.
Registered Trademark & Exclusive Right
A registered trademark can be obtained after being approved and registered by the Trademark Office through the registration application procedures.
The right holder and the registrant of the registered mark have the exclusive right to use the registered trademark for the approved goods/services, which is protected by law.
The exclusive right to use a registered trademark shall be valid for a term of ten years starting from the date of registration, and can be renewed before the expiry of the term.
How to Obtain a Registered Trademark
To obtain the registration of a trademark on designated goods or services and seek protection by law, the owner of the trademark should file a registration application before the Trademark Office.
Please see “Outline of CN Trademark System_Basics I_Registering a Trademark” for details.
Use and Protection of a non-Registered Mark
In principle, a non-registered mark can be used as long as the use is in compliance with the relevant regulations.
However, a non-registered trademark cannot be used on goods in respect of which a registered trademark must be used.
Signs that are legally prohibited from use shall not be used as trademarks.
The owner using a non-registered mark has no exclusive right to use the mark as protected by law.
Under special circumstances where a non-registered mark is a well-known trademark, it is also protected to a certain extent.
What shall not be Used as a Trademark
A non-registered mark that can be used in business activities must not be any of the following, which shall not be used as trademarks:
(1) signs identical with or similar to the State name, national flag, national emblem, national anthem, military flag, army emblem, military anthem, or decorations of the People's Republic of China; and signs identical with the names or symbols of central government departments of the State, or with the names of the particular places, or with the names or images of the symbolic buildings, where central government departments of the State are located;
(2) signs identical with or similar to the State names, national flags, national emblems or military flags of foreign countries, except that the foreign governments have approved such use;
(3) signs identical with or similar to the names, flags, or emblems, of international intergovernmental organizations, except that the organizations have approved such use or the public is not likely to be misled by such use;
(4) signs identical with or similar to the official signs or hallmarks indicating official control or warranty, except that such use is authorized;
(5) signs identical with or similar to the symbol or name of the Red Cross or the Red Crescent;
(6) signs having the nature of discrimination against any nationality;
(7) signs having the nature of fraud, being likely to mislead the public about the characteristics of the goods such as the quality or the place of origin; or
(8) signs detrimental to socialist morals or customs, or having other adverse effects.
The geographical names of the administrative divisions at or above the county level and the foreign geographical names well-known to the public shall not be used as trademarks, unless such geographical name has other meanings or is used as a component part of a collective mark or certification mark. Where a trademark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid.
Conflict with well-known marks
A trademark, used for identical or similar goods, that is a reproduction, an imitation, or a translation of a right holder's well-known mark not registered in China and likely to cause confusion, is prohibited from use.
A trademark, used for non-identical or dissimilar goods, that is a reproduction, an imitation, or a translation of a right holder’s well-known trademark that has been already registered in China, misleading the public and likely to cause prejudice to the interests of the registrant of the well-known trademark, is prohibited from use.
Conflict with geographical indication
Where a trademark contains a geographical indication of goods in respect of which the trademark is used, the goods do not originate in the region indicated, and it misleads the public, the trademark is prohibited from use. However, any trademark that has been registered in good faith shall continue to be valid.
Infringement by related parties
Where any agent or representative , without authorization from a right holder it or he represents, applies for registering, in its or his own name, a trademark of the right holder, and the right holder raises an opposition, the trademark is prohibited from use.
What shall bear a Registered Trademark
Such goods as cigarettes, cigars, packaged tobacco, and electronic cigarettes shall bear a registered trademark. Before the trademark is approved to register, such goods shall not be produced or sold.
Use of Trademarks
The use of a trademark means the use of the trademark on goods, packages or containers of the goods or in trading documents, or the use of the trademark in advertising, exhibition or any other business activities so as to distinguish the origin of the goods.
Principle for use
While using a trademark, the user or other related parties shall follow the principle of good faith.
Any user or other related parties of a trademark shall be responsible for the quality of the goods on which the trademark is used.
Use of Registered Trademarks
Obligation
A trademark registrant has an obligation to use and properly use their registered trademark in commence on their goods or services approved.
Quality
The registrant or other related parties of a registered trademark shall be responsible for the quality of the goods or services on which the registered trademark is used.
Consequence of no use
Where a registered trademark has not been used for three consecutive years without justified reasons, the trademark registration is at a risk of being cancelled.
Consequence of improper use
If a registered trademark has not been properly used so that it becomes a generic name of its designated goods, the trademark registration is at a risk of being cancelled.
No alteration & no change
While using a registered trademark, the registrant shall not alter the sign of the registered trademark, or change its/his name or address, or other matters recorded in the registration on its/his own.
If the sign of a registered trademark needs to be altered, the registrant must file a new registration application for such altered mark with the Trademark Office.
If the registrant’s name or address, or other matters recorded in the registration is changed, the registrant must file applications to record such changes with the Trademark Office.
If a registered trademark needs to be used on goods or services that are not included in the designated ones approved by the Office, the registrant must file a new application for registration for such goods or services.
Symbol for registration
The registrant has the right to use a symbol ® or ㊟ (often superscript) or an indication “registered trademark" with the trademark registered on the designated goods or services.
Geographical Indications as Registered Certification or Collective Marks
A geographical indication is a sign which indicates goods as originating in certain region, where a given quality, reputation or other characteristic of the goods is essentially attributable to the natural or human factors of the region.
A geographical indication can be registered as a collective mark or a certification mark.
Where a geographical indication is registered as a certification mark, the natural person, legal person or other organization whose goods meet the conditions for use of the geographical indication may request authorization to use the certification mark. The organization that controls the certification mark shall grant authorization to use it.
Where a geographical indication is registered by an organization as a collective mark, the natural person, legal person or other organization, whose goods meet the conditions for use of the geographical indication, may request to become a member of the organization. The organization shall accept them to be a member, according to its governing rules.
A party who has not requested to become a member of the organization that has registered a geographical indication as a collective mark, may also conduct fair use of the geographical indication, and shall not be forbidden from doing so by the organization.
Cancellation of Registered Trademark
Anyone may request the Trademark Office to cancel a registered trademark if the registered trademark has become a generic name of its designated goods or has not been used for three consecutive years without justified reasons.
Determination of use
The use of a registered trademark by the trademark holder, by its/his licensees, or by any others whose use does not violate the trademark holder’s intention can all be determined as the use of the trademark.
If an actually used sign is slightly different from the sign of a registered trademark but its distinctive characteristics are not changed, such actual use can be deemed as the use of the registered mark.
If there is no actual use of the registered trademark but only the act of its assignment or licensing, or if there is only publication about the trademark registration information or a statement to claim the exclusive right to use the registered trademark, such acts should not be deemed as the use of the registered trademark.
Justified reasons
If a trademark holder actually intends to use a trademark and has made necessary preparation for the actual use, but the actual use has not occurred due to other objective reasons, this situation may be deemed as a justified reason.
Justified reasons include force majeure, restrictions imposed by government policy, bankruptcy liquidation, and other justified reasons not attributable to the trademark registrant.
Examination
Where an applicant files a request with the Trademark Office to cancel a registered trademark on the grounds that it has become a generic name of its designated goods or has not been used for three consecutive years without justified reasons, the Trademark Office generally will make a decision within nine months from receipt of the request for cancellation.
On the ground of generic name
The Trademark Office will, after accepting the request for cancellation of a registered trademark that has become a generic name of its designated goods, notify the trademark registrant and order it/he to defend within two months upon receipt of the notice.
If no defense is made before the expiration of the two-month period, the Trademark Office will make a decision by default.
On the ground of non-use
Anyone applying for cancelling a registered trademark on the grounds of non-use for three consecutive years without justified reasons shall file such cancellation application after expiration of three years as of the announcement date of the registration of the trademark concerned.
The Trademark Office will, after accepting the request for cancellation of a registered trademark on the grounds of non-use for three consecutive years without justified reasons, notify the trademark registrant and order it/he to submit, within two months upon receipt of the notice, the evidence of using the trademark before the cancellation application is filed or to state justified reasons for the non-use.
If the registrant fails to submit any evidence within the time limit, or the evidence is invalid, and no justified reason is stated, the Trademark Office will cancel the registered trademark.
Where the Trademark Office decides to cancel a registered trademark, and the reason for cancellation only affects partial designated goods, only the trademark registration on such designated goods will be cancelled.
Relief
If the registrant or the cancellation applicant is dissatisfied with the decision of the Trademark Office to cancel or not cancel a registered trademark, it/he may, within fifteen days from receipt of the decision, apply for a review to the Trademark Office.
Where, at the expiration of the specified period, the registrant does not apply for a review of the decision made by the Trademark Office to cancel a registered trademark, the decision to cancel the registered trademark shall come into effect.
Review of Cancellation
Where the party concerned files a review against the decision of the Trademark Office to cancel or not cancel a registered trademark, the Trademark Office generally will make a review decision within nine months upon receiving the review application and notify the party concerned.
Any party concerned who is dissatisfied with the review decision, within thirty days from the receipt of the decision, may institute legal proceedings with Beijing Intellectual Property Court.
Where at the expiry of the prescribed period, the party concerned does not file a lawsuit with the Court against the review decision, the review decision shall come into effect.
Validity of Cancellation
For a registered trademark which has been canceled, the Trademark Office will publish the cancellation.
The exclusive right to use the registered trademark shall be terminated from the date of such publication.
Recording a Change for a Registered Mark
Where the name, address or other information pertaining to a trademark registrant of a registered trademark needs to be changed, the registrant shall file an application to record the alteration with the Trademark Office.
To change the name of a trademark registrant, the applicant shall also file an application to record such change, and submit certification documents pertaining to the change as issued by the relevant registration authority.
The Trademark Office will, upon approval of the application, issue a new certificate to the trademark registrant and publish an announcement.
If the Trademark Office does not approve the application, it will notify so to the applicant.
To change the name or address of a trademark registrant, the registrant shall apply for recording such change for all of its registered trademarks at the same time. If it/he fails to do so, the Trademark Office will request the registrant to make rectifications within a specific time limit. If the registrant fails to make the rectifications within the specific time limit, the Office will deem that the application for recording the change has been abandoned and will notify so to the applicant.
Assignment
Where a registered trademark is to be assigned, the assignor and the assignee shall sign an agreement of assignment and jointly file an application with the Trademark Office.
The Trademark Office will, after granting approval to the transfer of a registered trademark, issue a new certificate to the assignee and publish an announcement.
The assignee shall guarantee the quality of the goods in respect of which the registered trademark is used.
Where a registered trademark is to be assigned, the trademark registrant shall assign all of its/his similar trademarks together in respect of the same goods, or identical or similar trademarks in respect of similar goods.
Where an assignment is likely to cause confusion or may have other adverse impact, the Trademark Office will not approve the assignment and will notify so to the applicant.
The assignee shall have the exclusive right to use the trademark from the date of publication of the assignment.
Licensing
The registrant of a registered trademark may, by signing a trademark license contract, authorize another person to use the registered trademark.
Quality
The licensor shall supervise the quality of the goods in respect of which its/his registered trademark is used by the licensee. The licensee shall guarantee the quality of the goods in respect of which the registered trademark is used.
Indication of licensee
Where a licensee is authorized to use a registered trademark of a licensor, the name of the licensee and the geographic origin of the goods must be indicated on the goods that bear the registered trademark.
Recording
To grant a license to use a registered trademark, the licensor shall, within the term of the license contract, file an application with the Trademark Office to record such license with the relevant materials. The materials shall state the licensor of the registered trademark, the licensee, license term, the range of goods or services licensed to use and other relevant matters. Upon approval, the Trademark Office will publish an announcement.
Three types of licenses
(1) Exclusive license: the trademark registrant grants a licensee the exclusive right to use its/his registered trademark in the contracted period, regions, and ways, and accordingly the trademark registrant shall not use the registered trademark.
(2) Sole license: the trademark registrant grants a licensee the right to use its/his registered trademark in the contracted period, regions, and ways, and accordingly the trademark registrant also has the right to use the registered trademark, but the licensor shall not license the right to use it to another party.
(3) Non-exclusive license: the trademark registrant grants licensees the right to use its/his registered trademark in the contracted period, regions, and ways, and the licensor can still use the registered trademark and retains the right to grant multiple licenses.
Failure to record
A trademark license shall not be used against any bona fide third party, if the licensor fails to record the license with the Trademark Office.
Where the trademark registrant fails to record the license contract with the Trademark Office, the effectiveness of the contract shall not be influenced, unless the parties concerned have agreed otherwise.
The trademark assignment does not affect the effectiveness of the trademark license contract that has taken into effect before the assignment, unless it is otherwise agreed in the trademark license contract.
Pledge
Where the exclusive right to use a registered trademark is pledged, the pledger and the pledgee shall conclude a pledge contract in written form and shall jointly file an application with the Trademark Office to register the pledge. The Trademark Office will publish an announcement.
Removal
If a trademark registrant intends to remove its/his registered trademark or the registration of a trademark on partial designated goods, it/he shall file an application with the Trademark Office and return the original Certificate of Trademark Registration.
Where the Trademark Office approves the registrant’s such request, the registrant’s exclusive right to use the registered trademark on all designated goods or on partial designated goods shall be terminated, effective from the date when the Trademark Office receives the removal request.
Where a registered trademark is removed, the original Certificate of Trademark Registration shall be invalid and the Trademark Office will publish an announcement.
If the registrant requests to remove the registration on partial designated goods, the Trademark Office shall reissue a Certificate of Trademark Registration and publish an announcement.
Administration on Use of Registered Trademarks
Change without new approval
Where a trademark registrant, in using a registered trademark, alters the registered trademark, or changes its/his name or address, or other matters recorded in the registration on its/his own without applying for and obtaining registration for the change and alteration, the local IP bureau shall order it/him to make corrections within a specified time limit. If no corrections are made at the expiry of the specified time limit, the registered trademark can be canceled by the Trademark Office.
Cigarettes sold without a registered mark
Goods, such as cigarettes, cigars, packaged tobacco, and electronic cigarettes products which shall bear registered trademarks, shall not be sold in the market before the trademarks are approved for registration.
If this provision is violated, the local IP bureau shall order the party concerned to apply for trademark registration within a specified time limit and may impose a fine of no more than 20% of the illegal gains if the illegal gain is no less than CNY50,000, or a fine of no more than CNY10,000 if there is no illegal gain or the illegal gain is less than CNY50,000.
Unregistered used as registered or not be used
Where any party uses an unregistered trademark as a registered trademark, or uses an unregistered trademark which is a sign that shall not be used as a trademark as prescribed by the law, the local IP bureau shall order the party to cease the use, and to rectify the situation within a specified time limit, and may in addition circulate a notice of criticism. Where the illegal gain is no less than CNY50,000, a fine of no more than 20% of the illegal gain may be imposed, and where there is no illegal gain or the illegal gain is less than CNY50,000, a fine of no more than CNY10,000 may be imposed.
Illegal use of the wording “well-known trademark”
Where any party violates the provision of the Trademark Law to use the wording “well-known trademark” on goods, packages or containers of the goods, or use the wording in advertising, exhibition or any other business activities, the local IP bureau shall order the party to make rectification and impose a fine of CNY100,000.
Forging certificates
Any person who forges or alters a Certificate of Trademark Registration or other trademark certification document shall be subject to criminal liabilities according to the provisions of the Criminal Law pertaining to the crime of forging or altering certificates of state organs or to other relevant crimes.
No indications by licensees
Where a licensee violates the provision of the Trademark Law related to indicating the name of the licensee and the geographic origin of the goods, the local IP bureau shall order it or him to make rectification within a specified time limit. If the licensee fails to make rectification within the specified time limit, it or him shall be ordered to cease selling. If the licensee refuses to cease selling, a fine of no more than CNY100,000 shall be imposed.
Protection of well-known marks
The trademark holder who requests protection of a well-known trademark in accordance with the Trademark Law may file the request with the administrative authority for industry and commerce.
After the Trademark Office determines the trademark to be well-known in accordance with the Trademark Law, the administrative authority for industry and commerce shall order to cease the trademark use that violates the provisions of the Trademark Law, confiscate and destroy relevant trademark signs. If the trademark signs are inseparable from the associated goods, the authority shall confiscate and destroy them together.
Related Readings:
Outline of CN Trademark System_Basics I_Registering a Trademark
Outline of CN Trademark System_Basics IV_International Trademark Registration
Outline of CN Trademark System_Basics V_Well-known Trademark
