CNIPA issued Standards for Judging General Trademark Violations on December 13, 2021. The Standards take effect on January 1, 2022. It is necessary for the trademark owners to pay attention and stay alert in the course of trademark use so as to avoid triggering investigations and sanctions.
Formulated on the basis of the PRC Trademark Law, the Implementing Regulations of the PRC Trademark Law, the practical experience, the problems and best practice in trademark law enforcement as well as opinions solicited from the public and the industry, the Standards are aimed at enhancing trademark administration, providing guidance for the trademark law enforcement authorities, unifying trademark enforcement standards and offering transparent and predicable rules on trademark use and administration.
Highlights of the Standards
The Standards consists of 35 Articles and specify the general trademark violations in 9 categories as follows:
(1) Failing to use registered trademarks as required in violation of Article 6 of the PRC Trademark Law (Note: According to the applicable laws and regulations in China , it is imperative to use registered trademarks on tobacco, cigar, cigarettes including electronic cigarettes and it is compulsory to use registered trademarks on pharmaceuticals for human use except for Chinese traditional medical herbs and prepared Chinese tradition medicine prepared in pieces);
(2) Using signs prohibited as trademarks in violation of Article 10 of the PRC Trademark Law;
(3) Using the wording "well-known trademarks" in commerce in violation of Article 14 (5) of the PRC Trademark Law;
(4) Failing to indicate the name of the trademark licensee and origin of goods in violation of Article 43 (2) of the PRC Trademark Law;
(5) Altering the registered trademarks, the name or address of the trademark registrants etc. in the course of using the registered trademarks by the trademark registrant in violation of Article 49 (1) of the PRC Trademark Law;
(6) Using unregistered trademarks as registered trademarks in violation of Article 52 of the PRC Trademark Law;
(7) Failing to fulfill the obligations for administration of collective trademarks or certification trademarks in violation of Article 4 (2) of the Implementing Regulations of the PRC Trademark Law and Regulations on Registration and Administration of Collective Trademarks and Certification Trademarks;
(8) Failing to fulfill obligations for administration of trademark printing in violation of Article 7 to Article 10 of Regulations on Trademark Printing Administration;
(9) Filing and registering trademarks in bad faith in violation of Article 3 of Provisions on Regulating Trademark Filing and Registration.
The list of the Trademark violations is not an exhaustive one and the Standards are applicable to other trademark-related violations.
The Standards include concrete guidelines for judging trademark violations and stipulate that in the process of determining trademark violations, the applicable laws and regulations such as the PRC Trademark Law, the Implementing Regulations of the PRC Trademark Law, the Guidelines for Trademark Examination and Adjudication as well as public perception, community standards as well prevalent customs in China at the time of processing the disputes should be taken as reference.
Signs prohibited as trademarks
Article 10 of the PRC Trademark Law prohibits use of the following signs as trademarks:
(1) those 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, etc., and those identical with the name or symbol of a central government department of the State, or with the name of the particular place, or with the name or image of the symbolic building, where a central government department of the State is located;
(2) those identical with or similar to the State name, national flag, national emblem or military flag of a foreign country, etc., unless consent has been given by the government of the country;
(3) those identical with or similar to the name, flag or emblem of an international intergovernmental organization, etc., unless consent has been given by the organization or the public is not likely to be misled by such use;
(4) those identical with or similar to an official sign or hallmark indicating control and warranty, unless authorization has been given;
(5) those identical with or similar to the name or symbol of the Red Cross or the Red Crescent;
(6) those having the nature of discrimination against any nationality;
(7) those having the nature of fraud, being liable to mislead the public about the characteristics of the goods such as the quality or the place of origin; or
(8) those detrimental to socialist morality 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; registered trademarks consisting of or containing geographical names shall continue to be valid.
According to Article 14 of the Standards, use of unregistered trademarks is incompatible with the Standards if the unregistered trademarks have multiple meanings with meaning described as that in Article 10 (1.6) to Article 10 (1.8).
Article 15 of the Standards provides that after the CNIPA decisions or judgments which have determined the registered trademarks as in violation of Article 10 of the PRC Trademark Law have become effective and the trademark owner and third parties continue to use the trademarks in dispute, the law enforcement authorities may take ex officio actions against such trademark use and impose sanctions.
According to Article 16 of the Standards, the law enforcement authorities shall report to CNIPA the registered trademarks which are found to be in violation of the Article 10 of the PRC Trademark Law and CNIPA shall render judgments on the registered trademarks in dispute. After CNIPA has rendered judgment to invalidate the registered trademarks in dispute and the trademark owner and third parties continue to use the trademarks in dispute, the law enforcement authorities may take ex officio actions against such trademark use and impose sanctions.
Unregistered trademarks used as registered trademarks
According to Article 22 of the Standards, using unregistered trademarks as registered trademarks in violation of Article 52 of the PRC Trademark Law means using the wording "Registered Trademark" with the unregistered trademark used in commerce such as on products, packaging, container, business venue, business documents or in advertisements, trade shows etc. or using the trademark registration sign, i.e. ®, or similar sign with the unregistered trademarks, misleading public.
Article 23 of the Standards provides that any of the following acts constitutes using unregistered trademarks as registered trademarks.
(1) Using trademarks, which have not been filed to CNIPA for trademark application, with the indication "Registered Trademark" or the trademark registration sign, i.e. ®;
(2) Using trademarks, which have been filed to CNIPA for trademark application but rejected, with the indication "Registered Trademark" or the trademark registration sign, i.e. ®;
(3) Continuing to use the indication "Registered Trademark" or the trademark registration sign, i.e. ® after the registered trademarks have been cancelled, invalidated or withdrawn in absence of renewal or approved for withdrawal;
(4) Using registered trademarks beyond the goods/services covered with the indication "Registered Trademark" or the trademark registration sign, i.e. ®;
(5) Using registered trademarks, which have been altered in respect of the distinctive elements, with the indication "Registered Trademark" or the trademark registration sign, i.e. ®;
(6) Using the indication "Registered Trademark" or the trademark registration sign, i.e. ® on goods imported into China whereas the trademark has not been registered in China and there is no disclaimer on such a fact.
Legal actions against parties involved in filing and registering trademarks in bad faith
Article 35 of the Standards provides that based on decisions rendered by CNIPA, holding that the trademarks in dispute violate Article 4, Article 10 (1) and (8), Article 13, Article 15, Article 32 of the PRC Trademark Law or "the trademark registration has been acquired by fraud or any other unfair means" as prescribed in Article 44 (1) of the PRC Trademark Law, and the case-specific circumstances, the trademark law enforcement authorities may initiate investigations and impose penalties on parties involved in filing and registering trademarks in bad faith.
Summary
In China, the Administration for Market Regulation at the state, provincial, municipal and county level and their branches are the task force responsible for administering and regulating trademark use. They may take ex officio actions against the trademark violations or initiate legal actions based on complaints filed by third parties.
For foreign trademark owners, it is necessary for them to bear in mind the Standards and particularly coordinate with their subsidiaries and business partners and distributors in China to comply with the Standards and the applicable laws and regulations in China in trademark use so as to avoid trademark violations and the concomitant sanctions.
In practice, it is likely that the trademark owners may run into problems resulting from using signs prohibited as trademarks, improperly using the indication "Registered Trademark" or the trademark registration sign, i.e. ® or using the registered trademarks not in the registered form and besides, the trademark owners may be challenged by hostile third parties for trademark violations.
It is advisable for the foreign trademark owners to check with local counsels in China prior to or in the course of using the trademarks online and offline and in promotion and advertisements in China to make sure that the trademark use is in compliance with the Standards and the applicable laws and regulations in China. When, unfortunately, trademark owners are subject to investigations initiated by the Chinese law enforcement authorities for trademark violations, it is suggested that they contact local counsels in China immediately for timely response to the Chinese law enforcement authorities and recommendations on the most preferable solutions to the problems.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
