Asialaw - Clarity for Corporate Counsel

Basic Principles of Trademark Protection in China

By Lydia Yin, Chang Tsi & Partners

Date: July 2008

The major principles of trademark protection in China are the registration principle and the first to file principle. In other words, only registered trademarks enjoy prima facie protection in China. In applications for identical or similar trademarks in respect of identical or similar goods, registration is granted to the applicant who is the first to file an application for trademark registration. However, no approval will be given to an application for the registration of a trademark which has been used by others and is of a certain degree of influence, if the application is made by unfair means.

Trademark prosecution
Any trademarks which copy, imitate, translate or transliterate well-known trademarks shall not be registered or used, if: 

• the marks are used in respect of goods/services identical with or similar to the designated goods/services of well-known marks which have not yet been registered in China; or 

• the marks are used in respect of goods/services not identical with or similar to the designated goods/services of the well-known trademarks which have been registered in China.

Interim official actions such as a Requirement of Amendment and Official Refusal may arise in the process of examinations. A Requirement of Amendment is related only to procedural errors and problems pertaining to the description of goods/services. Failure to comply with the Requirement of Amendment will cause the application to be nullified.

The Trademark Office may issue an Official Refusal on absolute or relative grounds. An Application for Review may be filed with the Trademark Review and Adjudication Board (TRAB) to appeal against the official refusal.

Any party who is not satisfied with a published application may file an opposition with the Trademark Office within the three-month publication period. The Trademark Office's decision is appellable to TRAB.

Any registered marks that have ceased to be in use for three consecutive years are vulnerable to cancellation upon petition. The requirement for registered marks to be in use can be satisfied by licensed use or original equipment (OEM) manufacturing.

Enforcement of trademark rights
Judicial and administrative actions
China adopts a double-track system to enforce intellectual property rights, including trademark rights. Both litigation in courts and administrative resolution are utilized by trademark proprietors to enforce their trademark rights. Accordingly, one can either bring an action against the infringer in court, or request the relevant administrative authority to handle the disputes. Administrative resolution is not a requisite procedure that must precede the judicial resolution.

According to the Organic Law of Courts, the various levels of courts are The Supreme Court, Higher Courts, Intermediate Courts and Basic Courts. Intellectual Property Tribunals have been established at many Higher Courts and Intermediate Courts.

Administrations of Industry and Commerce (AICs) are established as administrative authorities under the central and local governments. The branches of the AICs extend nationwide and reach the lowest level of township. Their functions include enterprise registration and market supervision.

Bureaus of Quality and Technical Supervision are established nationwide under the control of central and local governments to supervise product quality. They also handle complaints about counterfeiting.

In trademark infringement cases, administrative actions through the AICs are the most effective and most frequently chosen approach. If a case concerns counterfeits, actions via the Bureaus are available. In comparison with court proceedings, administrative proceedings are both efficient and cost-effective. If damages are sought, however, judicial proceedings should be pursued. An action can be brought before the court in the location where the infringement takes place or the infringer resides. According to the Supreme Court, the court hearing the case should be an Intermediate court designated by a higher court at the provincial level.

Administrative or court actions against trademark infringement must be brought within two years from the date when the trademark owner knows or should have known about the counterfeiting and/or other infringing acts. The person who initiates the proceedings bears the burden of proof. Without appropriate evidence, neither the court, the AICs nor the Bureaus will take any action.

Customs protection
Customs are in charge of supervising imports or exports, and upon finding suspected infringing goods, they will notify the registrant in writing. The registrant should then apply to Customs for the detention of the goods, and should provide guarantees based on the value of the detained goods within three working days from the date it was notified, if it considers that the goods infringe upon its intellectual property.

If requested by the IP owner, Customs may also detain the suspected infringing goods in order to protect the unrecorded IP. The owner needs to go through a number of formalities, such as making a record of the intellectual property and providing sufficient evidence as well as a guarantee equal to the value of the goods. Afterwards, the owner has to apply to the court for an injunction or property preservation. Otherwise, Customs will release the goods if the court does not issue a notification of assistance within twenty working days from the date of the goods' detention.

Chang Tsi & Partners
7-8th Floor Tower A
Hundred Island Park
Bei Zhan Bei Jie Street
Xicheng District
Beijing 100044 P. R. China

Tel: +8610 8836 9999
Fax: +8610 8836 9996