Intellectual Property Enforcement in China - Part II: Trademarks

By See Wee Lee

Trademarks are essentially intangible assets for companies, which can exert a subtle influence on the hearts of consumers and form an unbreakable new relationship with the public. The principle of filing trademarks in China is different compared with the US “first-to-use” filing basis. Instead, China adopts the “first-to-file” doctrine, which grants a theoretically exclusive right of trademark use to the registrant who applies first. In China,  demonstrating that a trademark is “used in commerce” or an “intent to use” the trademark is not a requirement when proceeding to file the trademark application. Therefore, trademark applicants who are interested in registering their brands in China, do not need to prove “use” to proceed with the registration and even for maintaining or renewing the registration for that registered trademark.

Before you create your own brand for marketing and development in China, please be mindful of the following regulations:

Non-registrable Trademarks in China

Those identical with or similar to the following signs are not registrable as trademarks in China:

①　the State name, national flag, national emblem, military flag, or decorations, of the People's Republic of China;

②　the names of the specific locations that are seats of central state organs;

③　the names or designs of landmark buildings;

④　the state names, national flags, national emblems, or military flags of foreign countries, with the exception of those the use of which is permitted by the government of the country concerned;

⑤　the names, flags, or emblems of international intergovernmental organizations, with the exception of those the use of which is permitted by the organization concerned or is not liable to mislead the public;

⑥　an official mark or inspection stamp that indicates control and guarantee, except where authorized;

⑦　the symbol or name of the Red Cross or the Red Crescent;

⑧　having the nature of discrimination against any nationality;

⑨　constituting exaggerated and deceitful advertising; and

⑩　those detrimental to socialist ethics or customs, or having other unwholesome influences.

Also, none of the following marks may be registered as trademarks:

①　where the mark bears only the generic name, design, or model number of the goods concerned;

②　where it just directly indicates the quality, principal raw materials, function, use, weight, quantity, or other features of the goods; and

③　where distinctive characteristics are lacking.

Any mark mentioned in the preceding paragraph may be registered as a trademark if it has acquired distinctive features through use and is readily distinguishable.

Illustration of the “China Trademark Examination and Trial Guidelines”：

Circumstances where the proposed marks are determined by the Chinese examiners as the same/similar to the cited marks due to the likelihood of confusion:

1. One letter difference between the proposed mark with the cited mark does not make an obvious difference in terms of the overall appearance, even if there are changes in font and/or capital letters.

2. Different design, structure & font style of both marks do not make any difference, if the word mark consists of the same letters, as per the examples.

3. The arrangement of the combination trademark wording, either A+B or B+A does not increase the distinctiveness of the mark, such as

4. The form of singular and plural, gerunds, abbreviations, comparative, superlative, or/and by adding articles, conjunctions, etc., such as “MORE”, “THE”, “LA”, “LE”, “BY”, “FROM” and others will not make any difference, for example:

Exception: If the meaning or the overall appearance of the proposed marks consists of obvious differences and achieves distinctiveness, the public will be less likely to confuse/mislead your mark and the mark of another business, despite only  ONE  letter of the mark being different as per the following exceptions:

Exception 1：Pronunciation and font of the first letter of the trademark are obviously different;

Exception 2: Even though only ONE letter is different, if the whole meaning of the mark is not the same, it won’t cause any confusion to the consumer, for instance:

Exception 3: The same letters are in a different sequence/order.. For example:

Trademark Enforcement in China

In order to strengthen trademark protection in China, starting from the beginning of this year (2022), the China Intellectual Property Office has implemented and enforced several measures in relation to trademark infringement and unlawful behaviors. Under Chinese law, a trademark can be infringed in the following 10 ways:

(1) Infringement by (not) using a registered trademark (A registered trademark must be used, analogous to the European Trademark Rules)

(2) Infringement by signs which may not be used as a trademark  

(3)  The term “well-known mark” may not be used in commercial activities

(4) The trademark licensee fails to indicate its name and the origin of the goods

(5) Infringement where the trademark applicant, in the course of using the registered trademark, changes the registered trademark, name, address or other registered particulars of the applicant on its own initiative

(6) Using unregistered trademarks as registered trademarks

(7) Violation of provisions on the registration and administration of collective marks and certification marks, and failure to comply with obligations to administer collective marks and certification marks. In particular, the new regulation provides that the use of the mark shall be questioned under Article 21 of the Chinese Trademark Law if the application of the system for inspection and supervision of goods bearing certification marks has not been effectively carried out

(8) Violation of the provisions for the administration of trademark printing and failure to fulfil the duties of trademark printing administration

(9) Infringement through malicious application for trademark registration.

(10) Other infringements of the trademark administration order

Every nation has its own trademark laws, and in China, the filing theory is based on “first-to-file”, and there are numerous rules and regulations to comply with in order to get your mark registered in China.

If interested in protecting your intellectual property rights in China, please contact See Wee Lee.