In China, ownership of a trademark is determined on a first-to-file basis. Trademark Rights i.e. Trademark Exclusive Rights, it’s a kind of qualification and ability to possess, using, earning and handling of the trademark holder. Article 3 of Trademark Law of the People’s Republic of China specified that a registered trademark, including a trademark for goods, a service mark, a collective mark, and a certification mark, applies to a trademark that has been accepted and registered by the Trademark Office. The article below throws light on Trademark Protection and Rights in China. The trademark registrant shall possess the particular rights to use the mark, which shall be protected by law. There are two methods to acquire Trademark Exclusive Rights:
- One is the original acquisition, the applicant obtains trademark exclusive rights after registration.
- Another one is secondary acquisition such as assignment, license, inheritance, pledge, and combination or discrete of company.
Territories covered by trademark registration in China
- A certificate of trademark registration granted by the Trademark Office of China will cover only Mainland China.
- The trademark will not get protection in Hong Kong SAR, Macao SAR, and Taiwan
Who can own a Trademark in China?
A Trademark in China can be owned by:
- Any individuals
- Registered legal entities
- Registered company
- Other organizations
All of them are authorized to register and own a trademark in China.
How to Protect Trademark Rights in China
For trademark protection in China, there are three different ways:
(1) Protection of judicial
For Trademark Protection and Rights in China, Protection of Judicial is one way which can be undertaken:
- If any act infringes on the rights of a registered trademark, and a dispute arises, the parties shall negotiate to settle it.
- If any party declines to negotiate or the negotiation has failed, the registrant of the trademark or the involved persons may bring a suit before a people’s court.
- The people’s court may protect the lawful interests and rights of the use of a registered trademark through the adjudication procedures.
- The Article 57 under the Trademark Law specifies that where a trademark registrant or any interested party submits evidence proving that another party is engaged in or will soon engage in actions that infringe its exclusive rights to use its registered trademark and that, unless they are stopped promptly, will cause irreparable injury to its legitimate rights and interests, the trademark registrant of the interested party may, before filing a lawsuit, apply to the People’s Court for the granting of an injunction prohibiting the actions and protecting its assets, so the trademark registrant or any interested party may file application to court before litigation to stop the infringement of the exclusive rights to use a trademark or to preserve the evidence.
- Also, during the execution of the ruling to stop related activities, another party may suffer bigger losses because of such measures and the court may demand the applicant to provide additional security.
(2) Protection of Customs
For Trademark Protection and Rights in China, Protection of Customs is another way which can be undertaken:
- Custom protection is an important way to protect IP rights.
- According to the Regulations of the People’s Republic of China on the Protection of Intellectual Property Rights by Customs, protection for intellectual property rights by customs includes seizing of the will-be-imported or exported goods doubted of infringement, conducting investigation of the infringement, forcing penalty on the consignee or consignor, seizing the infringing goods, disposing the infringing goods and etc.
- Among the standards, to arrest the goods suspected of infringement is the most crucial step in intellectual property rights protection by customs.
- Presently, the customs can seize suspected infringing goods by application of the intellectual property rights owner and authority.
- But practically, it’s difficult to discover the evidence by the owner of the IP rights and the customs is not responsible for the supervision of the goods suspected of infringing and can only seize the goods suspected of infringing by request, so it mainly depends on the customs to discover with supervision.
- So, it is suggested that enterprises should get their intellectual property rights registered at customs.
(3) Administrative protection with Chinese characteristics
For Trademark Protection and Rights in China, Administrative protection with Chinese characteristics can also be undertaken:
- The authority to conduct investigation and seizure of the trademark infringing activities is with the administrations of industry and commerce.
- It is one of the characteristics in the Chinese system of trademark legal protection.
- It is also an important means to attack infringement and to protect legal rights.
- In most of the countries protection of the trademark is implemented by the judiciary.
- But most of the cases of Trademark infringement are investigated by the administrative enforcement department in China.
- When the trademark infringement comes in the notice of the owner, the report may be filed to the authority.
- No strict procedures for the report are present in the Law but generally, a report in writing together with the primary clues for the infringement and the right evidence of the obligee needs to be submitted.
Relevant Trademark Authority in China
- The authorized government agency in charge of trademark administration is the Trademark Office (TMO), which is affiliated to the State Administration for Industry and Commerce. It includes the examination of trademark applications, oppositions, as well as cancellation of trademark registration based on three years of non-use.
- The Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (TRAB) undertakes the examination of various applications for the appeal against the decisions made by the TMO. Trademark invalidation matters are also handled by TMO.
- Also, the local Administration for Industry and Commerce (AIC) or Market Supervision Administrations (MSA) are in charge of administrative enforcement of trademark rights.
- The People’s Court is in charge of trials for trademark-related administrative or civil litigation.
Relevant Trademark Legislation in China
- The most fundamental legislation is the Trademark Law of PRC, the implementing rule of the Trademark Law of PRC and Judicial Interpretations issued by the Supreme People’s Court.
- Also, the Anti-Unfair Competition Law of PRC grants protection to unregistered marks by protecting distinctive names, packaging or decoration of famous goods.
- The Criminal Code gives criminal protection against fake activities.
According to Article 8 of the Trademark Law, the following types of trademarks are registrable:
- Any sign that distinguishes the goods and services of an individual or organization from those of others, including any words, graphs, letters, numbers, three-dimensional signs, color combinations thereof, are registrable Trademarks.
- Also, sound (including musical jingles) may also be registered as a trademark.
Also Read: Trademark Application Status
The following are non-registrable Trademarks:
- Those identical or similar to the State names, national flags, national emblems, national anthem, military flag, army emblem, military songs, medals and others of PRC.
- Those identical to the names of the specific location, or those identical to the names or devices of landmark buildings.
- Marks identical or similar to the national flags, State names, national emblems or military flags of foreign countries, unless permitted by the government of the country.
- Those identical or similar to the names, flags, or emblems of international inter-governmental organizations, unless permitted by the organizations concerned or unlikely to mislead the public.
- Those identical or similar to an official sign or inspection seal that indicates control and guarantee, unless it is authorized.
- Marks identical or similar to the names or signs of the Red Cross or Red Crescent.
- Those of discrimination against any race.
- Those that may easily mislead the public in characteristics such as the quality of goods or place of production.
- Those harmful to socialist morals or customs, or having other unhealthy influences.
- Furthermore, a mark which lacks distinctiveness is non-registrable.
Legal protections available to unregistered trademarks in China
- The owner of an unregistered trademark may continue to use the trademark after another party has filed an application of a similar or identical trademark in respect of similar or identical goods or services.
- The owner must prove prior use and certainly acquired fame in respect of the unregistered trademark, covering the period before the filing date of the later trademark.
- Also, if the unregistered trademark is a well-known trademark in China, the owner may request legal protection when another party uses or applies to register a trademark which is an imitation, reproduction, or translation of the unregistered well-known trademark in respect of identical or similar goods or services.
- The rights to unregistered marks can be established by prior use and certainly acquired fame in China.
Must Read: Trademark Protection in UAE
Rights and protections afforded to owners of well-known and famous marks in China
- If the well-known trademark is unregistered, the owner can defend against trademarks that constitute reproductions, imitations or translations of the mark in respect of identical or similar goods or services.
- If the well-known trademark is registered, the owner can also defend against trademarks that constitute reproductions, imitations or translations of the mark in respect of different goods or services.
- Further, a well-known trademark owner may request the Trademark Review and Adjudication Board (TRAB) to declare a registered trademark invalid based on bad faith without any time limit (others are subject to a five-year time limit).
To what extent foreign trademark registrations are recognized or protected in China
- Given that the Trademark Law is domestic law, foreign trademark registrations are not automatically recognized or protected in China.
- However, a foreign trademark registrant can get legal protection in China:
- By territorial extension under the Madrid System.
- Under an agreement between the foreign country and China.
- Under an international treaty accepted by the foreign country and China.
Trademark protection and rights in China for registered Trademarks
- The main benefit of trademark registration is that a registered trademark gets protection against infringement.
- Owners of registered trademarks have the particular right to use them in respect of the designated goods or services.
- The use or registration of any identical or similar trademarks by another party in respect of the same or similar goods or services is prohibited.
It is observed that China has made significant progress in legislation, law enforcement, and judicial decisions in recent years for the Trademark Protection and Rights in China.
If you are also keen to register your trademark and give your business a competitive edge, give us a call at +91 8750008585 and our trademark experts will guide you. For more information, please visit our website TrademarkCart.