Application
for Trademark Registration
A
trademark is a sign that identifies and distinguishes the
source of the goods or services of one party from those
of others. In market economy, trademarks play a significant
role in guiding market business, boosting national economy
and protecting consumers¡¯ rights and interests.
Trademark
Registration System
China
implements the system of trademark registration. As provided
in Article 3 of the Trademark Law, registered trademarks
refer to trademarks that have been approved and registered
by the Trademark Office, and the trademark registrants shall
enjoy the exclusive right to use the trademarks, and be
protected by law. The owner of a trademark shall apply to
the Trademark Office for registration if he wants the trademark
used in business to be fully protected by law.
Exclusive Right to
Use a Registered trademark
Once a trademark is approved
and registered, the trademark registrant is entitled to
the exclusive rights to use the trademark, which includes:
1. Right to use the trademark:
the trademark registrant is entitled to use the trademark
in respect of the goods and service approved and use it
in relevant business.
2. Exclusive right: the trademark
registrant enjoys the exclusive right to use the registered
trademark, no one else shall use identical or similar trademarks
in respect of identical or similar goods and services.
3. Right to license; the trademark
registrant is entitled to authorize other to use the registered
trademark by signing a license contract in accordance with
the law.
4. Restraining Power: the
trademark registrant is entitled to prohibit any one from
using identical or similar trademarks in respect of identical
or similar goods and services without permission.
5. Right of mortgage: the
trademark registrant is entitled to set a mortgage with
the registered trademark in business.
6. Right to invest: The trademark
registrant has the right to regard its registered trademark
as the intangible assets and make the investment according
to the due course of law according to the legal provisions
7. Right of assignment: the
trademark registrant is entitled to assign the registered
trademark to any one else in accordance with law, either
paid or unpaid.
8. Heirdom: The registered
trademark can be inherited by its rightful heir according
to the order of inheritance as the incorporeal property.
Means of Trademark
Application
Any Chinese natural person
or legal entity intending to acquire the Exclusive Right
to Use a Registered trademark can either come to the Trademark
Office to apply for the registration or appoint any of such
organizations as designated by the State to act as his or
its agent for the registration. Any foreign person or foreign
enterprise intending to apply for the registration of a
trademark or for any other matters concerning trademarks
in China sha1l appoint any of such organizations as designated
by the State to act as his or its agent.
Which Signs can be
Registered as Trademarks?
As provided in Article 8 of
the Trademark Law, in respect of any visual sign capable
of distinguishing the goods or service of one natural person,
legal entity or any other organization from that of others,
including any word, design, letters of an alphabet, numerals,
three-dimensional symbols, combinations of colors, and their
combination, an application may be filed for registration.
Meanwhile, it is also provided in Article 9 that Any trademark
in respect of which an application for registration is filed
shall be so distinctive as to be distinguishable, and shall
not conflict with any prior right acquired by another person.
Who can Apply for
Trademark Registration?
As provided in Article 4 of
the Trademark Law, any natural person, legal entity or other
organization intending to acquire the Exclusive Right to
Use a Registered trademark for the goods produced, manufactured,
processed, selected or marketed by him or it, or for the
service provided by him or it, shall file an application
for the registration of the trademark with the Trademark
Office.
Which Signs shall
not be Used as Trademarks?
As provided in Article 10
of the Trademark Law, the following signs shall not be used
as trademarks:
1. 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;
2. Those identical with or
similar to the State names, national flags, national emblems
or military flags of foreign countries, except that the
foreign state government agrees otherwise on the use;
3. Those identical with or
similar to the names, flags or emblems or names, of international
intergovernmental organizations, except that the organizations
agree otherwise on the use or that it is not easy for the
use to mislead the public;
4. Those identical with or
similar to official signs and hallmarks, showing official
control or warranty by them, except that the use thereof
is otherwise authorized;
5. Those identical with or
simi1ar to the symbols, or names, of the Red Cross or the
Red Crescent;
6. Those having the nature
of discrimination against any nationality;
7. Those having the nature
of exaggeration and fraud in advertising goods; and
8. Those detrimental to socialist
morals or customs, or having other unhealthy influences.
The geographical names as
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, but such geographical terms
as have otherwise meanings or are a part of collective marks/or
a certification marks shall be exclusive. Where a trademark
using any of the above-mentioned geographical names has
been approved and registered, it shall continue to be valid.
Which Signs shall
not be Registered as Trademarks?
As provided in Article 11,
the following signs shall not be registered as trademarks:
1. Those only comprising generic
names, designs or models of the goods in respect of which
the trademarks are used;
2. Those having direct reference
to the quality, main raw materials, function, use, weight,
quantity or other features of the goods in respect of which
the trademarks are used; and
3. Those lacking distinctive
features.
The signs under the preceding paragraphs may be registered
as trademarks where they have acquired the distinctive features
through use and become readily identifiable.
As also provided in Article
28 of the Trademark Law, where a trademark the registration
of which has been applied for is identical with or similar
to the trademark of another person that has, in respect
of the same or similar goods, been registered or, after
examination, preliminarily approved, the Trademark Office
shall refuse the application.
Trademarks and Service
Marks
Trademarks are the trademarks
used in respect of goods, while service marks are those
used in respect of service. China began the acceptance of
applications for service marks registration from June 1st
, 1993.
Collective Marks and
Certification Marks
Collective marks mean signs
which are registered in the name of bodies, associations
or other organizations used by the members thereof in their
commercial activities to indicate their membership of the
organizations. Certification marks mean signs which are
controlled by organizations capable of supervising some
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 the goods or services.
Geographical Indications
Geographical indications refer
to the indications that identify a particular good as originating
in a region, where a given quality, reputation or other
characteristic of the goods is essentially attributable
to its natural or human factors. Geographical indications
are protected through trademark laws in China, since they
can be registered as certification marks and collective
marks. Up to now, there have been over 100 certification
marks with geographical indications therein registered in
China, including American ¡°Florida¡± oranges, Chinese ¡°Kuerle
Pear¡± (Xinjiang Autonomous Region), ¡°Hami Melon¡±, ¡°Jingdezhen
china¡± (Jiangxi province) and so on.
Three-dimensional
Marks and Color Trademarks
Three-dimensional marks refer
to the three-dimensional symbols used in respect of goods
and service, and color trademarks are combinations of colors
or any combination of the colors, words, devices and other
elements. As provided in Article 12 of the Trademark Law,
Where an application is filed for registration of a three-dimensional
sign as a trademark, any shape derived from the goods itself,
required for obtaining the technical effect, or giving the
goods substantive value, shall not be registered. China
began the acceptance of applications for three-dimensional
and color trademarks registration from December 1st , 2001.
Protection of Well-known
Trademarks
China has been fulfilling
her promise to the world to protect the legitimate rights
and interests of both Chinese and foreign trademark owners
since China became party to a member of Paris Convention
for the Protection of Industrial Property. As provided in
Article 25 of Regulations for the Implementation of Trademark
Law revised in 1993, to violate the principles of honesty
and credit and plagiarize, counterfeit or translate any
well-known trademark of another party in the registration
shall be deemed as acts committed in the acquisition of
a trademark registration by fraud or any other unfair means.
As provided in Article 13 of the Trademark Law revised in
2001, where a trademark in respect of which the application
for registration is filed for use for identical or similar
goods is a reproduction, imitation or translation of another
person's trademark not registered in China and likely to
cause confusion, it shall be rejected for registration and
prohibited from use. Where a trademark in respect of which
the application for registration is filed for use for non-identical
or dissimilar goods is a reproduction, imitation or translation
of the well-known mark of another person that has been registered
in China, misleads the pub1ic and is likely to create prejudice
to the interests of the well-known mark registrant, it shall
be rejected for registration and prohibited from use. As
provided in Regulations for the Implementation of Trademark
Law revised in 2002, a trademark owner who believes that
the registration of its well-known trademark as an enterprise
name by another person is likely to deceive or mislead the
public may apply to the competent registration authorities
of enterprise names for the cancellation of the registration
of the enterprise name.
Procedures for Trademark
Registration
After the acceptance of the
application for trademark registration, the procedures for
trademark registration includes the following periods: formality
check, substantive examination, being preliminarily approved
and published, opposition and being approved for registration.
The opposition period includes three months from the date
of the publication, any person may, within this period,
file an opposition against the trademark that has, after
examination, been preliminarily approved. Where any party
concerned is dissatisfied with the Trademark Office¡¯s decision
of refusal of the registration application, decision of
opposition and decision of cancellation, he or it may apply
for a review to the Trademark Review and Adjudication Board.
Where any party concerned considers a registered trademark
to be improperly registered, he or it may apply for cancellation
of the trademark to the Trademark Review and Adjudication
Board. Where any party concerned is dissatisfied with the
decision of the Trademark Review and Adjudication Board,
he or it may institute legal administrative proceedings
with Beijing No. 1 Intermediate People's Court.
Period of Validity
of a Registered Trademark
The period of validity of
a registered trademark shall be ten years, counted from
the date of approval of the registration. Where the trademark
registrant intends to continue to use the registered trademark
beyond the expiration of the period of validity, an application
for renewal of the registration shall be made within six
months before the said expiration. Where no application
therefore has been filed within the said period, a grace
period of six months may be allowed, yet extra fees shall
be charged for the delay of renewal. If no application has
been filed at the expiration the grace period, the registered
trademark shall be cancelled. The period of validity of
each renewal of registration shaIl be ten years.
Assignment and Licensing
of Registered Trademarks
The right holder of a trademark
has the right to deal with his/her intangible property in
accordance with legal procedures. Trademark holders can
dispose trademark right either by assignment or by licensing.
Trademark assignment is the transfer of trademark ownership
to another party voluntarily by the right holder, either
paid or unpaid. And a trademark transfer caused by merger,
annex or judgment by a court can also be viewed as trademark
assignment. In that case, the assignee should handle assignment
with the Trademark Office. After approval, an assigned trademark
can be publicized on the Trademark Gazette. The assignee
enjoys the exclusive right to use the trademark since the
date of publication. The trademark licensing of registered
trademarks is to allow others to use the trademarks without
assigning the ownership. To license a registered trademark,
the licensor shall sign a trademark license contract with
the licensee. And the licensor shall report the contract
to the Trademark Office to make a record of the contract
within 3 months counting from the date on which the contract
was signed.
Acts Deemed as an
Infringement of the Exclusive Right to Use a Registered
Trademark
As provided in Article 52
of the Trademark Law and Article 52 of Regulations for the
Implementation of Trademark Law, Any of the following acts
shall be an infringement of the exclusive right to use a
registered trademark:
1. To use a trademark that
is identical with or similar to a registered trademark in
respect of the identical or similar goods without authorization
from the trademark registrant;
2. To sell goods knowingly
which contain a counterfeit trademark;
3. To counterfeit, or to make,
without authorization, representations of a registered trademark
of another person, or to sell such representations of a
registered trademark as were counterfeited, or made without
authorization;
4. To replace, without the
consent of the trademark registrant, its or his registered
trademark and market again the goods bearing the replaced
trademark;
5. To use any signs which
are identical or similar to another person¡¯s registered
trademark as the name of the goods or decoration of the
goods on the same or similar goods, thus misleading the
public;
6. To intentionally provide
facilities such as storage, transport, mailing, concealing,
etc. for the purpose of infringing another person¡¯s exclusive
right to use a registered trademark.
Protection of the
Exclusive Right to Use a Registered trademark
Protection of the exclusive
right to use a registered trademark can be achieved through
both administrative means and judicial means. Where any
party has committed any of such acts to infringe the exclusive
right to use a registered trademark, the interested party
can complain to local Administrations for Industry and Commerce
at or above county level, requiring the administrations
to investigate and handle the cases. The administrative
authority for industry and commerce has the power to make
an administrative decision to the cases which are not serious
enough to constitute a crime, where the case is so serious
as to constitute a crime, it shall be transferred to the
judicial authority for handling. Where any interested party
is dissatisfied with decision on handling the matter, it
or he may, within fifteen days from the date of receipt
of the notice, institute legal proceedings in the People's
Court according to the Administrative Procedure Law of the
People's Republic of China. If there have been instituted
no legal proceedings or made on performance of the decision
at the expiration of the said period, the administrative
authority for industry and commerce shall request the People's
Court for compulsory execution thereof. The interested party
may also institute legal proceedings in the People's Court
directly, and the court will protect the legitimate rights
and interests of the right owner according to the Civil
Procedure Law of the People's Republic of China.
Administrative Proceedings
against Trademark Infringements
According to the relevant
provisions of the Trademark Law, any one can complain to
the local administrations at or above the county level where
the infringer resides or the infringement took place. The
complaints shall be put in the written form usually, noting
relevant information and evidence, such as the name, address
of the infringer, the place where the infringement took
place or was found, and relevant marks which are suspected
to have infringed registered trademarks or stuff like photos
and so on. Meanwhile, the interested party can also make
a complaint on the phone. Where the trademark registrant
complains to the administrative authority for industry and
commerce, requesting for protection of the exclusive right
to use a registered trademark, the written form shall be
handed in with effective certification. Once the administrative
authority decides to deal with the case, it shall notify
the complaint of the result.
