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The Third Revision of Chinese Trademark Law – Analysis and Comment

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Abstract

As of May 1, 2014, China’s new Trademark Law, together with its newly adopted implementing Regulations, has officially taken effect. This Law, as the third amendment of Chinese Trademark Law, contains substantial revisions, especially with respect to subject matter, registration procedure, bad faith application, enforcement, etc. Based on primary sources of Chinese legislation and practice, this paper intends to present a comprehensive view of the new Trademark Law.

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Notes

  1. Trademark Law of the People’s Republic of China (adopted at the 24th Meeting of the Standing Committee of the Fifth National People’s Congress, August 23, 1982, effective March 1, 1983), 1982 Standing Comm. Nat’l People’s Cong. Gaz. 3 (P.R.C.). Available at: http://www.npc.gov.cn/wxzl/gongbao/2000-12/05/content_5001321.htm (accessed October 15, 2013) (hereinafter: TML 1982).

  2. Ren Zhonglin [任中林], “Guan yu Zhonghua Renmin Gongheguo Shang biao fa xiu zheng an cao an de shuo ming” [Explanation on the Draft of the Trademark Law of 1982 关于《中华人民共和国商标法》(草案)的说明], 1982 Standing Comm. Nat’l People’s Cong. Gaz. 3 (P.R.C.). Available at: http://www.legalinfo.gov.cn/zt/2005-01/19/content_183660.htm (last visited October 15, 2013).

  3. Liu Minxue [刘敏学], “Guan yu Zhonghua Renmin Gongheguo Shang biao fa xiu zheng an cao an de shuo ming” [Explanation on the Draft of the Trademark Law of 1993. 关于《中华人民共和国商标法》(草案)的说明], 1993 Standing Comm. Nat’l People’s Cong. Gaz. 1 (P.R.C.). Available at: http://www.npc.gov.cn/wxzl/gongbao/1992-12/22/content_1481237.htm (accessed October 15, 2013).

  4. The First Amendment of Trademark Law of the People’s Republic of China (adopted at the 30th Meeting of the Standing Committee of the Seventh National People’s Congress, February 22, 1993). The English version is available at: http://www.wipo.int/wipolex/en/text.jsp?file_id=181327 (accessed October 15, 2013) (hereinafter: TML 1993).

  5. The Second Amendment of Trademark Law of the People’s Republic of China (adopted at the 24th Meeting of the Standing Committee of the Ninth National People’s Congress, October 27, 2001) is the existing Trademark Law, the English version is available at: http://www.wipo.int/wipolex/en/text.jsp?file_id=131395 (accessed October 15, 2013) (hereinafter: TML 2001).

  6. Wang Zhongfu [王众孚], “Guan yu Zhonghua Renmin Gongheguo Shang biao fa xiu zheng an cao an de shuo ming” [Explanation on the Draft of the Trademark Law of 2001. 关于《中华人民共和国商标法》(草案)的说明], 2001 Standing Comm. Nat’l People’s Cong. Gaz. 7 (P.R.C.). Available at: http://www.npc.gov.cn/wxzl/gongbao/2001-12/06/content_5280833.htm (accessed October 15, 2013).

  7. See Li Jibin [李吉斌], “Shang biao fa xiu zheng an cao an shou ci bei ti qing shen yi” [The draft of the Trademark Law amendment submitted for the first review 商标法修正案草案首次被提请审议] (December 24, 2012), available at: http://www.npc.gov.cn/huiyi/cwh/1130/2012-12/25/content_1748210.htm (accessed October 15, 2013).

  8. The Proposal of the SAIC for Trademark Amendment, which contains 79 articles in total, is unpublished. Published is the Explanation on the Proposal of the SAIC (November 18, 2009) (hereinafter: Proposal of SAIC).

  9. The Proposal of the State Council for Trademark Amendment, issued on September 1, 2011 contains 75 articles. Available at: http://www.gov.cn/gzdt/2011-09/02/content_1939013.htm (hereinafter: Proposal of State Council).

  10. The Amendment of the Trademark Law of P.R.C. (Draft) and the Explanation on the Amendment of Trademark Law of P.R.C. (Draft), announced by the National People’s Congress for public opinion on December 28, 2012. The English version is available in Westlaw China (accessed October 15, 2013) (hereinafter: Amendment Draft).

  11. See Report: “Shang biao fa xiu gai jin ru er shen” [The revision of the Trademark Law has come into the second review 商标法修改进入二审], Ren min ri bao [People’s Daily 人民日报], (June 28, 2013), available at: http://www.npc.gov.cn/huiyi/lfzt/sbfxzcazt/2013-06/28/content_1799396.htm (accessed October 15, 2013).

  12. The New Trademark Law referred to here is the codified version based on “Decision of the Standing Committee of the National People’s Congress on Revising the Trademark Law”, which was adopted and promulgated on August 30, 2013 and has been in effect since May 1, 2014. An English version (unofficial) of the Decision is available on Westlaw China. An English version of the New Trademark Law (codified version) is available at: http://www.cpahkltd.com/EN/infolist.aspx?m=20100301115838543312 (hereinafter: New TML).

  13. See the Explanation on the Proposal of the SAIC, supra note 8.

  14. Article 8 New TML: “Any sign that can serve to distinguish the goods of a natural person, legal person, or other organization from those of another, including any character, graph, alphabetic letter, number, three-dimensional symbol, color combination, sound etc., or any combination thereof, may be made a trademark for application for registration.”

  15. Interestingly, during the course of the third revision, it was suggested in the Proposal of SAIC in 2009, that the CTMO may in certain circumstances accept applications of “smell, dynamic marks” or other non-traditional signs for registration of trademarks. Nonetheless, probably taking the technical and other aspects of preparation for examination of the application for trademark registration into account, the Proposal of the State Council in 2011 deleted the said provision and explicitly excluded smell, dynamic marks from the subject matter of trademark protection.

  16. Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (hereinafter: the Trademark Directive/TMD). It is worth noting that the promulgation of First Directive 89/104/EC is actually earlier than that of the TRIPs Agreement.

  17. Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community Trade Mark (codified version) (hereinafter: the Community Trademark Regulation/CTMR).

  18. ECJ Case C-273/00, Sieckmann v. DPMA, [2002] ECR I-11737.

  19. ECJ Case C-283/01, Shield Mark v. Kist, [2003] ECR I-14313, para. 64.

  20. Regulations for the Implementation of the Trademark Law of the People’s Republic of China (promulgated by Decree No. 358 of the State Council on August 3, 2002 and effective as of September 15, 2002), translated at: http://www.wipo.int/wipolex/en/text.jsp?file_id=125979 (accessed October 15, 2013) (hereinafter: IR 2002).

    Article 36 IR 2002: “where a registered trademark is canceled pursuant to Art. 41 of the Trademark Law, the exclusive right to use the said trademark shall be deemed as not existing from the very beginning”.

  21. The Chinese Trademark Review and Adjudication Board (TRAB) is the administrative department responsible for reviewing any decision issued by the Chinese Trademark Office and examining any invalidation request against a registered trademark. If a party disagrees with a decision issued by the TRAB, it can seek judicial review of the TRAB’s decision.

  22. Pursuant to Art. 41 TML 2001, where a trademark is registered in violation of the provision of Art. 11 (the distinctiveness requirement) of this law, any unit or individual may request that the TRAB make a ruling to cancel such a registered trademark.

  23. The TRAB held that Netac had always used “优盘” [You Pan] as the name for the goods, which objectively diluted and even eliminated the distinctiveness of the sign as a trademark. As a result, ordinary consumers have already formed the impression that “优盘” [You Pan] is a new type of computer mobile storage equipment and it is widely known to the public as a generic name. Therefore, its registration as a trademark is cancelled.

  24. Article 44(1) New TML: “A registered trademark shall be declared invalid by the CTMO if it is in violation of Art. 10, Art. 11 or Art. 12 of this Law, or its registration is obtained by deceptive or other illegitimate means. Any entity or individual may request the TRAB to declare such registered trademark invalid.”

    Article 47(1) New TML: “A registered trademark that is declared invalid in accordance with Art. 44 or Art. 45 of this Law shall be announced by the CTMO, and the exclusive right to use the registered trademark shall be deemed as non-existent ab initio”.

  25. The Chinese Trademark Office (CTMO) is the administrative department in charge of trademark registration and administration throughout the territory of mainland China (Art. 2 New TML). Both the CTMO and the TRAB are subordinate to the State Administration for Industry & Commerce (SAIC).

  26. Article 49(2) New TML: “Where a registered trademark has become the generic name of the goods for which its use is approved … any entity or individual may apply to the CTMO for revocation of the registered trademark.”

    Article 55(2) New TML: “The CTMO shall announce a registered trademark that is revoked. The exclusive right to use the registered trademark shall terminate upon the date of announcement”.

  27. Article 12 TMD/Art. 51 CTMR: Grounds for revocation; Arts. 3 and 4 TMD/Arts. 52 and 53 CTMR: Grounds for invalidation. See for details, Kur and Dreier ( 2013 ). 234 ff.

  28. Implementing Rules of the Trademark Law of the People’s Republic of China of 1993 (adopted and promulgated by the State Council on July 15, 1993 and replaced by Regulations for the Implementation of the Trademark Law on September 15, 2002); an unofficial translation is available at: http://blog.sina.com.cn/s/blog_5fb06dcd0100cyb5.html (hereinafter: IR 1993).

    Article 16 IR 1993: “If the CTMO holds that an application for trademark registration can be revised, it shall issue a Notice of Examination Suggestions to the applicant and request the latter to make the revision within 15 days from the day the notice is received; in case the application is not revised or not revised within the time limit or, though revised, still does not conform to the relevant provisions of the Trademark Law, the said trademark registration application shall be rejected”.

  29. See “Shang biao fa xiu gai cheng xian liu da liang dian” [Six highlights presented in the revision of Trademark Law 商标法修改呈现六大亮点], Ren min ri bao [People’s Daily 人民日报] (September 4, 2013), available at: http://www.npc.gov.cn/npc/xinwen/lfgz/lfdt/2013-09/04/content_1805539.htm (accessed October 15, 2013).

  30. See Report: “Shang biao fa xiu gai jin ru san shen” [The revision of the Trademark Law has come into the third review 商标法修改进入三审], Ren min ri bao [People’s Daily 人民日报], (August 27, 2013), available at: http://www.npc.gov.cn/huiyi/lfzt/sbfxzcazt/2013-08/27/content_1804224.htm (last visited October 15, 2013).

  31. Announcement of Preliminary Approval is published by the CTMO weekly in both paper and digital forms. The digital form is available at: http://sbj.saic.gov.cn/sbgg/index1.html.

  32. Explanation on the Amendment Draft, supra note 10.

  33. Wang Ze [汪泽], “Shang biao yi yi zhi du chong gou” [Reconstitution of the trademark opposition system 商标异议制度重构], 8 Zhonghua shang biao (2007) [China Trademark Monthly 中华商标]. Mr. Wang is an officer of the TRAB and the article is available at: http://www.saic.gov.cn/spw/llyj/200904/t20090409_55221.html (accessed October 15, 2013).

  34. Explanation on the Proposal of SAIC, supra note 8.

  35. Article 33 New TML: “A holder of prior rights or an interested party may, within three months from the date a trademark is announced, raise objections to the CTMO if he is of the opinion that the trademark is in violation of para. 2 and para. 3 of Art. 13, Art. 15, para. 1 of Art. 16, Art. 30, Art. 31 or Art. 32 of this Law. Any party that is of the opinion that the trademark is in violation of Art. 10, Art. 11 or Art. 12 of this Law may raise opposition to the CTMO within the said three-month period. Where no objection is raised upon expiry of the announcement period, the CTMO shall approve the registration application, issue the certificate of trademark registration, and make an announcement thereof”.

  36. Explanation on the Amendment Draft, supra note 10.

  37. Article 44(1) New TML, supra note 24. Article 45(1) New TML: “Where a registered trademark is in violation of para. 2 and para. 3 of Art. 13, Art. 15, para. 1 of Art. 16, Art. 30, Art. 31 or Art. 32 of this Law, the holder of prior rights or an interested party may request the TRAB to declare the registered trademark invalid within five years upon the registration of the trademark. Where registration is obtained mala fide, the owner of a well-known trademark is not bound by the five-year restriction”.

  38. Title IV, Sec. 4 CTMR: Observations by third parties and opposition.

  39. For details see http://oami.europa.eu/ows/rw/pages/CTM/regProcess/examination.en.do (accessed October 15, 2013).

  40. Id.

  41. Article 36(2) New TML comes from Art. 23(3) IR 2002.

  42. German Act on the Protection of Trade Marks and Other Symbols; the English version is available at: http://www.gesetze-im-internet.de/englisch_markeng/index.html (accessed October 15, 2013).

  43. See Explanation on the Amendment Draft, supra note 10; Explanation on the Proposal of SAIC, supra note 8.

  44. A detailed account of the practice and problems regarding well-known trademarks in China is given in: Liu et al. ( 2009 ) See also Feng (2013) 828 ff.

  45. The original meaning of the ideogram “” is “Sturdy Steed,” which well depicts the brand image of BMW automobiles and is deeply rooted among the Chinese people.

  46. See news on the website of the CCPIT Patent and Trademark Law Office, available at: http://www.ccpit-patent.com.cn/china/News/2013010901.htm (accessed October 15, 2013).

  47. Explanation on the Amendment Draft, supra note 10.

  48. Id.

  49. Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the WIPO at the 34th series of meetings of the assemblies of the member states of WIPO, September 20–29, 1999, is available online at: www.wipo.int/about-ip/en/development_iplaw/pub833.htm (accessed October 15, 2013) (hereinafter: JR); Art. 2(1)(b) JR enumerates several factors that the competent authorities of member states may consider in ascertaining the well-known status.

  50. “Xin shang biao fa liang dian jie du” [Analysis on highlights of the new Trademark Law 新商标法亮点解读], Fa zhi ri bao [Legal Daily 法制日报] (September 3, 2013), available at: http://epaper.legaldaily.com.cn/fzrb/content/20130903/Articel06002GN.htm (accessed October 15, 2013).

  51. E.g. see Beijing Dewei Trading Co., Ltd. v. Longyan Wanda Trading Co., Ltd, (2008) Min Zhong Zi No. 17428. Details about the decision of the Beijing Second Intermediate People’s Court are available at: http://www.law-lib.com/cpws/cpws_view.asp?id=200401247449 (accessed October 15, 2013).

  52. Some believe that “agent” stands for trademark agents who are entrusted to deal with application affairs for trademark registration and “representative” stands for the person who represents the enterprise to deal with trademark registration applications and other matters, while some understand “agent and representative” as the subjects that include not only the entities mentioned above but also the business agencies and representatives of the company like distributors or representative offices; others consider that it does not conform to the Paris Convention to limit “agent” merely to “trademark agents” and think that “agent and representative” pursuant to the Paris Convention should refer to all agencies in other countries who are entitled to sell the products in their countries on which the registered trademark of the proprietor is used. See Wu Xinhua [吴新华], “Shang biao ping shen yu shi jian de jian nan dui jie” [Difficulty of adapting trademark examinations to practice 商标评审与实践的艰难对接], Zhongguo zhi shi chan quan bao [China Intellectual Property News], January 28, 2007, available at: http://blog.sina.com.cn/s/blog_4aa52ecd010007nd.html (accessed October 15, 2013).

  53. The Beijing High People’s Court, (2006) Xing Zhong Zi No. 93, April 3, 2006.

  54. The Supreme People’s Court, (2007) Xing Ti Zi No. 2. For more details, see Ma Dongxiao [马东晓], “Yi ci bu che di de fan zheng – jian ping shang biao fa di shi wu tiao ‘dai li ren’ de gai nian” [A not complete correction—comment on the concept of “agent” in Art. 15 of the Trademark Law 一次不彻底地反正——兼评商标法第十五条“代理人”的概念], available at: http://cpfd.cnki.com.cn/Article/CPFDTOTAL-ZHQL200910001035.htm (accessed October 15, 2013).

  55. Section 18 of the Supreme Court’s Opinion on Certain Issues Concerning the Trial of Administrative Cases of Trademark Authorization Confirmation provides the interpretation of the term “certain influence” within the meaning of Art. 31 TML, setting forth that trademarks which have been used within the territory of China and known by the relevant public within a certain region shall be deemed as trademarks with a certain influence; and the status of “being with certain influence” could be proved by evidence that an earlier trademark has been in use within a certain region for a certain period of time or has been advertised to a certain extent.

  56. Article 68(1) New TML: “A trademark agency that commits any of the following shall be ordered to make correction within the prescribed time period by the relevant administration for industry and commerce, be given a warning, and be subject to a fine of not less than RMB 10,000 but not more than RMB 100,000; its primary person-in-charge subject to direct liabilities and other personnel subject to direct liabilities shall be given a warning and be subject to a fine of not less than RMB 5,000 but not more than RMB 50,000 […] (3) violation Para. 3 or Para. 4 of Art. 19 of this Law […]”.

  57. E.g. on April 10, 2007, the United States requested consultations with China concerning certain measures pertaining to the protection and enforcement of intellectual property rights in China. See DISPUTE DS362,China—Measures Affecting the Protection and Enforcement of Intellectual Property Rights, available at: http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds362_e.htm (accessed October 15, 2013).

  58. See Explanation on the Amendment Draft, supra note 10; Explanation on the Proposal of SAIC, supra note 8.

  59. Article 53 TML 2001; Art. 51 IR 2002.

  60. “Zhi shi chan quan qin quan ru he suan sun hai pei chang” [How to calculate the damages for IP infringement? 知识产权侵权如何算损害赔偿?], Zhongguo zhi shi chan quan bao [China Intellectual Property News 中国知识产权报] (December 10, 2009), available at: http://www.cipnews.com.cn/showArticle.asp?articleid=14435 (accessed October 15, 2013).

  61. Id., the quoted opinion is from Chen Jinchuan, the presiding judge of the IP tribunal of the Beijing High People’s Court.

  62. Article 65(2) of the Chinese Patent Law provides: “If the losses of the patentee, profits of the infringer, or royalties of the patent cannot be easily determined, the people’s court may, on the basis of the factors such as the type of patent right, nature of the infringement, and severity of the case, determine the amount of damages within the range from RMB 10,000 to RMB 1,000,000.

    The existing Patent Law of the PRC (as amended up to the Decision “Regarding the revision of the Patent Law of the PRC” on December 27, 2008) is available at: http://www.wipo.int/wipolex/en/details.jsp?id=5484 (accessed October 15, 2013).

  63. See the Proposal of SAIC, supra note 8; the Proposal of the State Council, supra note 9; and the Amendment Draft, supra note 10.

  64. Report: “The revision of the Trademark Law has come into the second review,” supra note 11.

  65. Report: “The revision of the Trademark Law has come into the third review,” supra note 30.

  66. Different opinion, see infra note 75.

  67. The Supreme People’s Court Opinion on Certain Issues with Respect to Intellectual Property Judicial Adjudication Under the Current Economic Situation, as promulgated by the Supreme People’s Court on April 29, 2009 (hereinafter: SPC Opinion on IP Issues Under Current Situation). The English version is available at: Westlaw China (accessed October 15. 2013), Sec. 16.

  68. BMW v. Guangzhou Shiji Baochi Apparels Ltd., one of top eight Chinese IP cases of 2013, available at: http://www.chinacourt.org/article/detail/2013/10/id/1110815.shtml, a brief English version can be found in “IPR Model Cases,” available at: http://chinaipr.com/2013/11/10/ipr-model-cases-part-of-the-long-journey-towards-ipr-case-law-with-chinese-characteristics/ (accessed October 15, 2013).

  69. Zhang Xuesong et al. [张雪松], “Beijing shi fa yuan 2012 nian zhi shi chan quan su song shi da an li” [2012 top ten IP cases of Beijing People’s Court 北京市法院2012年知识产权诉讼十大案例], available at: http://bjgy.chinacourt.org/article/detail/2013/03/id/931715.shtml (accessed October 15, 2013).

  70. Proposal of State Council, supra note 9.

  71. In Westlaw China’s English version of the New TML, it is translated as “maliciously.” Here, the authors opt to use “willful infringement” instead of “malicious infringement”.

  72. Amendment Draft, supra note 10.

  73. Article 63 New TML: “(1) The amount of damages for infringement on the exclusive right to use a trademark shall be determined according to the actual loss suffered by the rightholder as a result of the infringement or may be determined according to the profits gained by the infringer from the infringement if the actual loss is difficult to determine, or may be reasonably determined by reference to the multiples of the trademark royalties if both the loss of the rightholder and the profits of the infringer are difficult to determine. Where an infringer willfully infringes upon another party’s exclusive right to use a trademark and falls under grave circumstances, the amount of damages may be determined as not less than one time but not more than three times the amount determined according to the foregoing methods….

    (3) Where the actual loss suffered by the rightholder as a result of the infringement, the profits gained by the infringer from the infringement and the royalties of the registered trademark concerned are difficult to determine, the people’s court shall render a judgment on awarding damages of up to RMB three million depending on the circumstances of the infringing acts”.

  74. Explanation on Amendment Draft, supra note 10.

  75. According to this interpretation, the statutory damages are not subject to the compensatory principle.

  76. BMW v. Guangzhou Shiji Baochi Apparels Ltd, supra note 68.

  77. E.g. CHINT Group Co. Ltd v. Schneider Electric (Tianjin) for infringement of a small circuit breaker utility model patent, decision of Wenzhou Intermediate Court 3rd Civil Tribunal (IP) first instance No. 135 (2006). The court decided on September 26, 2007: since the Schneider company refused to provide an account of costs, the operating profit ratio of the Schneider company from selling the infringing products could thus not be calculated directly. For this reason, the court regarded the average operating profit ratio of the entire sales of Schneider’s products as the operating profit ratio to calculate Schneider’s profits due to infringement. The court judgment is available at: http://www.zscqf.com/shownews.asp?id=1283 (accessed October 15, 2013).

  78. Section 16 of the SPC Opinion on IP Issues Under the Current Situation provides: “In determining the amount of the profits caused by infringement on the basis of the claims of the claimant and the fact that the defendant refuses to provide evidence in its possession without any valid reasons, the court shall have sound base or ground, and the amount so determined shall be reasonable and fully persuasive.” Supra note 67.

  79. Article 57(1) and (2) New TML: “Any of the following acts shall be deemed infringement of the exclusive right to use a registered trademark: (1) Using a trademark that is identical with a registered trademark on the same goods without the licensing of the registrant of the registered trademark; (2) Using a trademark that is similar to a registered trademark on the same goods, or using a trademark that is identical with or similar to the registered trademark on similar goods without the licensing of the registrant of the registered trademark, which is likely to cause confusion….”.

  80. Article 16(1) second sentence TRIPs stipulates that, in case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

  81. Article 9(1)(a) and (b) CTMR; Art. 5(1)(a) and (b) TMD.

  82. See L. Huang & C. Xu [黄燕娟 徐华], “She wai tie pai jia gong zhong de shang biao qin quan wen ti” [Probe into the trademark infringement in OEM 涉外贴牌加工中的商标侵权问题探讨] (January 5, 2013), available at: http://www.chinacourt.org/article/detail/2013/01/id/809819.shtml (accessed October 15, 2013).

  83. E.g. in the case of Shanghai Shenda Audio Electronics Ltd. v. Jiulide Electronics (Shanghai) Ltd., decision of the Shanghai High Court 3rd Civil Tribunal (IP) final No. 65 (2009), the court found that the OEM products were entirely exported to the USA and therefore only the US market and American consumers were involved. In other words, without any sales of such OEM products in the Chinese market, it was impossible to cause confusion or mistakes for the relevant consumers in China. As a result, the acts of the Jiulide company did not constitute trademark infringement.

  84. Section 7 of the SPC Opinion on IP Issues Under Current Situation, supra note 67.

  85. Id.

  86. Article 3 IR 2002: “The use of a trademark, as referred to in the TML and these Regulations, shall include the use of the trademark on goods, packages or containers of the goods or in trading documents, and the use of the trademark in advertising, exhibition or any other business activities”.

  87. Decision of the Beijing High People’s Court, (2010) Gao Xing Zhong Zi No. 265, available at: http://www.cnipr.net/article_show.asp?article_id=16621 (accessed October 15, 2013).

  88. Ryohin Keikaku Co., Ltd. v. TRAB, see details in the decision of the Supreme People’s Court, (2012) Xing Ti Zi No. 2.

References

  • Feng S (2013) How are unregistered trademarks protected in China? IIC 44:815

  • Kur A, Dreier T (2013) European Intellectual Property Law—Text, Cases and Materials. Edward Elgar, Cheltenham

  • Liu K-C, Tao X, Wang E (2009) The use and misuse of well-known marks listings. IIC 40:685

Download references

Acknowledgments

The authors are grateful to Professor Annette Kur for providing most of the updated information regarding the EU jurisprudence and her valuable comments on the original manuscript.

Author information

Authors and Affiliations

  1. Shanghai, China

    Weijun Zhang (Associate Professor; Director, IP & Competition Law Center, Law School of Tongji University)

  2. Munich, Germany

    Lizhou Wei (Doctoral Candidate in IP Law at Ludwig Maximilian University of Munich)

  3. Freiburg, Germany

    Yanbing Li (Doctoral Candidate in IP Law at the Albert Ludwigs University of Freiburg)

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  1. Weijun Zhang
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Appendix: Legal grounds for opposition and invalidity declaration under the New TML

Appendix: Legal grounds for opposition and invalidity declaration under the New TML

Subject, who is capable of raising an opposition

Subject, who is capable of requesting an invalidity declaration

Related provisions

Legal grounds

Any person (Art. 33)

Any unit or individual (any person) (Art. 44(1))

Art. 10

Signs which may not be used as trademarks

Art. 11

Signs which may not be registered as trademarks because they lack distinctiveness

Art. 12

The shape of the mark only represents the nature of the product, or its shape is required for achieving a technological result, or its shape adds substantial value to the product

A holder of prior rights or an interested party (Art. 33)

A holder of prior rights or an interested party (Art. 45(1))

Art. 13(2) and (3)

Reproduction, imitation or translation of another’s well-known trademark

Art. 15

An agent or representative registers a trademark of one of its principals in its own name, without authorization; application to register a trademark which is identical with or similar to an unregistered trademark already used by another party who has a contractual, business or other relationships with the applicant

Art. 16(1)

A trademark contains a geographical indication of goods and the goods are not from the region indicated therein

Art. 30

A trademark is identical with or similar to another’s trademark that has been registered or approved after the preliminary examination

Art. 31

A trademark is identical with or similar to another’s trademark whose application is filed first

Art. 32

An application infringes upon another person’s existing prior rights or the applicant, by illegitimate means, rushes to register a trademark that is already used by another party and has a certain influence

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Zhang, W., Wei, L. & Li, Y. The Third Revision of Chinese Trademark Law – Analysis and Comment. IIC 45, 556–586 (2014). https://doi.org/10.1007/s40319-014-0218-7

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