After World War 11, the Communists under Mao Zedong established an autocratic socialist system that, while ensuring China's sovereignty, imposed strict
controls over everyday life and cost the lives of tens of millions of people. After 1978, his successor Deng Xiaoping and other leaders focused on market-oriented economic development and by 2000 output had quadrupled. For much of the population, living standards have improved dramatically and the room for personal choice has expanded, yet political controls remain tight.
Who May Apply?
Any natural person, legal person, or other organization may apply for trademark registration. Two or more natural persons, legal persons, or other organizations may jointly file an application for the registration of the same trademark with the Trademark Office and jointly enjoy and exercise the exclusive right to use the trademark. Citizens and enterprises of foreign countries may apply on the basis of a bilateral treaty between China and the applicant's country, or on the basis of an international treaty to which China and the applicant's country adhere (reciprocity clause).
What Can Be Registered?
Registration of trademarks for tobacco and pharmaceutical products is compulsory. Without trademark registration, tobacco and pharmaceutical products are subject to confiscation, and their producer is subject to a fine. The Trademark Law states what can be registered as a trademark: "any visual sign capable of distinguishing the goods or services 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 symbol, combinations of colors, and combinations of the above mentioned elements, an application may be filed for
registration." The following elements can be registered as a trademark:
1. a name or surname;
2. numerals or a combination of numerals and letters;
3. lettering: a mark consisting of three or more plain block letters is registrable, while a mark composed of only one or two block letters is not registrable unless the letters are artistic or in script style or combined with a device;
4. devices: a registrable device may be an abstract representation or a realistic drawing;
5. three-dimensional shapes, not including those shapes with pure functional features; 6. wrapping: the wrapping for soaps, candies, cigarettes, or batteries are generally registrable; the wrapping should be novel and distinctive and not indicate the appearance or the function of the goods;
7. color combinations: in practice these are only approved upon acquired distinctiveness; and
8. the full name of an enterprise.
Since the 1993 amendments to the Chinese Trademark Law, service marks are registrable. The provisions of the Trademark Law concerning trademarks for goods are applicable to service marks.
What Cannot Be Registered?
A mark may not be registered if:
1. It is identical or similar to the state name, national flag or emblem, military flag, or decorations of the People's Republic of China;
2. It is identical or similar to the state names, national flags or emblems, or military flags of foreign countries;
3. It is identical or similar to the flags, emblems, or names of international intergovernmental organizations;
4. It is identical or similar to the official signs and hallmarks (stamplseal) indicating control and warranty, except that the use thereof is otherwise authorized;
5. It is identical or similar to the symbols or names of the Red Cross or Red Crescent;
6. It consists of generic names or designs of the goods for which the mark is used;
7. It has direct references to the quality, main raw materials, function, use, weight, quantity, or similar features of the goods for which the mark is used;
8. It is discriminatory against national minorities;
9. It represents deceitful advertisements of the goods;
10. It is harmful to socialist morals or customs or is otherwise offensive (negative effect in public);
11. It consists of geographical names of the provinces, cities, and counties of China and of commonly known foreign geographical names; however, geographical names possessing other meanings may be registered; or 12. It is identical or similar to a well-known trademark covering identical or similar goods if the well-known trademark is not registered in China, and covering dissimilar goods if the wellknown trademark is registered in China.
The well-known trademark should be widely recognized in the territory of China. If a trademark is famous in other countries but has little recognition in China, it is not considered to be a "well-known trademark."
Under a new practice of the Chinese Trademark Office, those parts of a trademark that are not in themselves registrable may be disclaimed. The disclaimer will not allow exclusive rights on the part of the trademark disclaimed. This part may then be used by a third party and may not be considered as infringement. Marks described under the above points 6 and 7 can be registered upon acquired distinctiveness. If a generic name or descriptive term is used for a long time and has obtained a secondary meaning for consumers, these ones would easily connect the generic name or descriptive term with the owner and hislher products.
Account should be taken of the following factors in the establishment of a well-known mark: -reputation of the mark to the relevant public; - time of continued use of the mark; - consecutive time, extent, and geographical area of advertisement of the mark; - records of protection of the mark as a well-known mark; and
- any other factors relevant to the reputation of the mark. According to the Chinese Trademark Law, where a trademark in respect of which the application for registration is filed for nonidentical 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 public and is likely to create prejudice to the interests of the well-known mark registrant, it will be rejected for
registration and prohibited from use. As a normal practice, a trademark owner cannot prevent the use of similar marks used on different goods or services. However, the owner of a well-known trademark may prevent the use of similar marks used on related goods or services in different classes. The China Trademark Law also states that where a registered trademark stands in violation of the provisions of Articles 13, 15, 16 and 31 of the Law, any other trademark owner concerned or interested party may, within five years from the date of the registration of the trademark, file a request with the Trademark Review and Adjudication Board for adjudication to cancel the registered trademark. Where a well-known mark is registered in bad faith, the genuine owner thereof is not restricted by the five-year limitation.
There is no specific provision under the Trademark Law but the People's Republic of China laws, as a principle, protect bona fide thirdparty rights and interests.
The registration of a name as a mark or part of a mark does not prevent an individual from using his or her own name or the name of his or her company if adopted in good faith for different goods and or services from those covered by the registered trademark.
Applications for registration must include the following information:
1. Power of attorney without requirement of notarization or legalization (for Chinese and foreign applicants);
2. Five copies of the representation of the mark;
3. Local trademark attorney for foreigners but there is no requirement for residency or physical presence in the country. Chinese
applicants may apply directly to the Trademark Office.
Evaluation & Review
China has adopted a "first-to-file" principle for the registration of trademarks and service marks. Substantive examination covers absolute and relative grounds. It usually takes about three years at the present time to obtain the registration of a trademark.
Applications for registration of trademarks must be filed at the Chinese Trademark Office (CTMO). The Office first examines each application for completeness. If the Office finds that the application does not meet the formal requirements, it will directly reject the application and the applicant will have to refile the application. If the application meets the formal requirements, the Office will issue an official receipt bearing the filing date and filing number. The CTMO will then examine the description(s) of goods and services. It will issue official comments if the descriptions are vague or too broad and the applicant will then have 30 days to respond. There is no possibility of extension. If the applicant fails to reply within 30 days, the CTMO will deem the application as abandoned. The CTMO will then proceed withs a substantive examination of the application. It will examine the mark both on its own merits and in relation to any conflicting prior registration or application. If a conflicting mark is found, the examiner will directly issue a notification of refusal. The applicants can launch an appeal against the
refusal before the Trademark Review and Adjudication Board (TRAB) within 15 days upon receiving the notification.
According to the Paris Convention, priority may be asserted within six months of the filing of the first Convention application. It is also possible to claim national priority, which will be determined as of the date of the application was filed. Such priority may be claimed, for instance, within six months of the opening date of
an officially recognized exhibition at which the mark is used.
Registration is valid for 10 years, commencing from the date of the registration. Registration can be renewed every 10 years without time limitation.
The only required document to renew is a power of attorney. Notarization or legalization is not required. There is a six-month grace period to renew starting from the last day before expiry. If the renewal takes place during the grace period, an additional official fee of RMB500 is charged for each mark.
After expiration of the grace period, registration is considered as abandoned if the mark has not been renewed.
The registration symbol 8 can only be used for registered marks. The benefit of using this symbol is to make third parties aware that the trademark is registered, which increases its protection. This symbol implies that the representation of the trademark is identical to the trademark as registered. For example, if the font or
the style is modified, the mark is no longer deemed as a registered mark, and the registration symbol cannot be used. Use of 8 next to a trademark different from the registered mark is subject to an administrative penalty imposed by the local Administration for Industry and Commerce (AIC).
The Chinese character "ti:" with a circle around it may also be applied to a registered trademark and has the same effect as 8. The symbol TM may be used on all the trademarks, registered or not. If the trademark owner does not oppose this symbol, the mark may be diluted or used by others. If a mark is not used properly, the local AIC may prohibit the user from using the trademark and order him to rectify the situation within a specified period. In addition, the AIC may issue a notice of criticism or impose a fine. Improper use of a mark can be reported to the authority through a formal complaint or detected by the authority directly on the market in the framework of their authority and responsibility.
For the present time, there is no specific law regulating the registration, use, disputes, and other related issues concerning domain names. Therefore, when domain name disputes are raised, the domain name authority (China International Economic and Trade Arbitration Commission Domain Name Dispute Resolution Center (DNDRC of CIETAC)) and the courts follow the Domain Name Dispute Resolution Policy of the CNNIC (Chinese Internet Network Information Center)
and the Chinese Anti-unfair Competition Law. The Chinese Internet Network Information Center is responsible for operating and administrating the Chinese domain name registry ".CN" country code top-level domains (ccTLD) and the Chinese Domain Names System (CDN).
An applicant can file an application to register a domain name through a qualified online domain registrar. Registration of domain names follows the principle of "first come, first served." Domain name applicants must submit true, accurate, and complete domain name registration information and sign a client registration agreement with the domain name registrar. Once a domain name has been registered, the domain name applicant becomes the holder of the domain name.
A domain name can last indefinitely, provided that the renewal fee is paid. A domain name can be renewed for a maximum of 10 years. A domain name registrar does not have an obligation to examine whether there is any conflict with registered trademarks or to notify such domain name applications to trademark owners. Nevertheless, the owner of a prior trademark can obtain the cancellation or the transfer of a domain name identical to hisher mark, reserved after hisher mark's registration date via a dispute resolution procedure. The dispute resolution process is offered by the following two entities: 1. China International Economic, and Trade Arbitration Commission (CIETAC)
2. Hong Kong International Arbitration Centre (HKIAC)
The trademark owner will be also able to get the domain name registration transferred to him via an assignment agreement with the domain name holder on an amicable basis. After the executed agreement and relevant application forms are submitted and approved by the domain name registrar, the assignment will then take effect.
I It is also possible to go before the local Medium People's Court of the plaintiff or defendant's location to request the cancellation of the transfer of a domain name. According to the CNNIC Domain Name Dispute Resolution Policy, the general requirements to file a complaint (applicable before the court or in the dispute resolution procedure) are: 1. The disputed domain name is identical or confusingly similar to the plaintiffs name or trademark in which the plaintiff has civil
rights or interests;
2. The disputed domain name holder has no right or legitimate interest in respect of the domain name or major part of the domain name;
3. The disputed domain name holder has registered or has been using the domain name in bad faith; or
4. The disputed domain name would cause confusion amongst the public in connection with the plaintiffs name or trademark. There are no remedies except the cancellation or the transfer of the domain name if there is a favorable decision to the trademark owner. The owner of a domain name reserved before the filing of a mark by another party cannot obtain the cancellation of the trademark. Indeed, a prior reserved domain name does not serve as legal basis for cancellation
of a trademark.
New customs regulations entered into force on March 1, 2004. According to the relevant provisions of the General Administration of Customs, importation or exportation of any goods that infringe the exclusive right to use a registered trademark is prohibited. The Custom Regulations provide that the owner of an intellectual property right may record his or her intellectual property rights before the Customs General. According to this same regulation,' where an owner of IP rights requests Customs to impound goods suspected of infringing upon rights, he or she must provide to Customs a guarantee equal to the value of the goods for compensation for any loss that may be incurred by the consignee or the consignor due to improper application and for payment of the fees for storage, custody, and disposal of the goods after they are impounded by Customs. Where the owner of IP rights pays the fees for storage and custody directly to the storage
provider, such fees are deducted from the guarantee. The specific procedures are established by the General Administration of Customs. Impounding may last up to a maximum of 20 days.