New rules on trademark use in China came into force on 1 January 2022. These are intended to strengthen the detection of illegal trademark acts in China and mean stricter requirements for manufacturers on trademark use in China.
On 13 December 2021, the China National IP Protection Administration (CNIPA) published the new regulations for trademark use in China. The aim is to strengthen the protection of intellectual property rights, according to the CNIPA notice, in accordance with the “Trademark Law of the People’s Republic of China”. This in turn was reformed in 2019 and has been in force since 1 December 2019 – we reported.
New rules on trademark use in China
The new rules on trademark use in China, which have now been adopted, will apply from 1 January 2022. Essentially, enforcement criteria are set out, identifying 10 types of infringement and unlawful acts in relation to trademark protection. Intellectual property offices in all provinces in China are required to adhere to these criteria from now on.
In detail, these are:
- Infringement by (not) using a registered trademark (according to Article 6 of the Chinese Trademark Law, a registered trademark must be used, analogous to the European Trademark Rules)
- Infringement by signs which may not be used as a trademark (according to Article 10 of the Chinese Trademark Law)
- Infringement of Article 14(5) of the Chinese Trademark Law, which provides that the term “well-known mark” may not be used in commercial activities
- Violation of Article 43(2) of the Chinese Trademark Law if the trademark licensee fails to indicate its name and the origin of the goods
- 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 (Infringement of Article 49(1) of the Chinese Trademark Law)
- Violation of the provisions of Article 52 of the Chinese Trademark Law by using unregistered trademarks as registered trademarks
- 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
- Violation of the provisions for the administration of trademark printing and failure to fulfil the duties of trademark printing administration
- Infringement through malicious application for trade mark registration.
- Other infringements of the trade mark administration order
Rules on trademark use in China- important for foreign manufacturers
Beyond these basic criteria, Rules 14 and 23 are particularly important for the new regulation of trade mark use in China. Both are particularly important for foreign manufacturers.
Trademark registered abroad but not in China
Thus, according to Rule 23, a foreign party using a trademark not registered in China may not use a registration mark or other symbols or terms representing registered trademarks. Note: this also applies in the case where a trademark is registered abroad but not in China. In such a case, the trademark owner of the foreign trademark would be seen as a trademark infringer in China if he brings goods into Chinese territory with his registration symbol valid in the foreign country.
The same applies if a trademark has been revoked, invalidated or cancelled in China but is still used as a registration symbol in China after its expiry.
Trade mark with several meanings
If an unregistered trade mark with multiple meanings is used, this may be considered as a breach of the rules (against Rule 14 of the New Rules). This is the case if one of the possible meanings of the mark gives the Chinese public the impression that a sign is being used which may not be used as a trademark according to Chinese Trademark Law, Article 10 (6-8), and these are:
(6) signs referring to ethnically discriminatory persons
(7) those which are misleading and may cause the public to misunderstand the quality and other characteristics of the goods or place of origin
(8) and such signs as are detrimental to socialist morals and mores.
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