September 22, 2019 Feature

Practical Tips for Trademark Protection in China

Nina Li

©2019. Published in Landslide, Vol. 12, No. 1, September/October 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Compared with most of the Western countries, the trademark protection history in China is relatively short. Chinese trademark law and practice have been constantly evolving since the first trademark law came into effect in 1983. Due to the differences in laws and protection systems, people outside of the country have difficulty understanding the trademark protection situation in China. This article shares some practical tips that are very important to developing trademark protection strategies in China.

Consider Chinese Subclasses

Like many other countries, China uses the NICE Classification system. However, a key difference in Chinese trademark practice is the use of subclasses. The Chinese Classification Table for Similar Goods and Services (Chinese Classification) is the main criteria that examiners in China adopt in determining whether goods and services are similar. The Chinese Classification is mainly based on the NICE Classification but includes nearly 2,000 additional goods and services that are commonly used in China. Such goods and services include “hair mousse” in class 3, “refrigerator deodorant” in class 5, “mashed potato” in class 29, and “housekeeping service” in class 45. Goods and services in one class are divided into subclasses. For example, within class 7 there are 54 subclasses, and within class 25 there are 13 subclasses.

Foreign applicants often ask why some identical or similar marks have coexisted in the same class. The reason is, according to the Chinese Classification, their designated goods or services are dissimilar. Generally speaking, goods and services that fall into different subclasses are considered dissimilar even though they belong to the same NICE class. For instance, “shoes” and “hosiery” are considered dissimilar, as are “caps” and “scarfs,” although they all fall into class 25. Furthermore, in some subclasses, goods and services that fall into different parts are dissimilar. For instance, “thermal adjustment device” and “lightning arrester” are dissimilar although they both belong to the same subclass 0914. Therefore, in most cases, for a trademark registration in China, the more subclasses it covers the wider protection scope it obtains.

However, goods and services can also be similar even though they fall into different classes. For instance, “movements for clocks and watches” in class 14 is similar to “smart watch (data processing)” in class 9, and “steel pipes” in class 6 is similar to “heating installations” in class 11. Thus, it is important to take subclasses into consideration when filing trademark applications in China.

Perform an Availability Search before Filing

When applicants start to plan on filing a new trademark application in China, the first thing they should consider is an availability search. With a reliable search report, the successful registration rate of the mark can be estimated relatively accurately. If a prior identical or similar mark exists, necessary action can be taken beforehand.

When a new trademark application is blocked by a prior mark(s), it is common to take necessary action such as nonuse cancellation, opposition, or invalidation. However, according to current practice in China, the average examination speed for appeals against provisional refusals is faster than the examination speed for nonuse cancellation, opposition, or invalidation cases. Besides, according to Chinese trademark law, within one year from the time when a registered trademark is declared invalid, the trademark office will not approve any application for registration of a trademark identical with or similar to the invalid trademark. If any decision on the nonuse cancellation or opposition is appealed, it will take even longer to wait for the results. Therefore, if an action such as nonuse cancellation or opposition is initiated after the application date of a provisionally refused mark (not the date of the appeal against the provisional refusal), the National Intellectual Property Administration, PRC (CNIPA) probably will not suspend the appeal case against the provisional refusal so as to wait for the results of the action.

As the Beijing IP Court has also accelerated its examination speed for administrative lawsuit against adjudication on appeal of provisional refusals, applicants are encouraged to on the one hand try to keep the first application alive as long as possible and on the other hand file a backup application while waiting for the results of the nonuse cancellation or opposition case. However, if such actions are taken against the prior conflicting marks before the filing date of the applicant’s own trademark application, the examiners in the appeal procedure against the provisional refusal concerning the application are more likely to wait for the results. Therefore, if a pre-filing availability search is done and necessary actions can be taken against prior obstacles beforehand, the applicant usually will be in a better position.

Evaluate Advantages of Filing Single-Class vs. Multi-Class Application

Since the third amendment to the Trademark Law of the People’s Republic of China took effect in 2014, multi-class applications are acceptable in China. Before then, the Chinese trademark office only accepted single-class applications. However, according to current practice in China, there are obvious disadvantages to filing multi-class applications.

First, for national multi-class trademark applications, when official notification of provisional partial refusal is issued, a divisional application form will be attached. If the applicant would like to divide the application, it can execute and submit that application form to the trademark office within 15 days. The division is only possible between the provisionally refused part and the provisionally approved part. If an appeal is filed and a divisional application is also filed, the application with the provisionally approved items will generate a new application to be published with a new application number but reserving the original application date. For purposes of the appeal proceeding before the CNIPA, the original filing number will be reserved for the application in respect of the provisionally refused items due to the partial refusal. If an appeal is filed and a divisional application is not requested, the whole application with the provisionally approved item cannot move forward to publication and registration until the CNIPA makes adjudication on the appeal. However, if the applicant would like to abandon the provisionally refused part, there is no need to appeal or divide the application. In that case, the provisionally refused part will be automatically deleted by the trademark office after the appeal and dividing deadline, and the provisionally approved part will be published.

Second, if a multi-class application is opposed only in respect to part of the classes, a divisional application is impossible. That means the whole application including the unopposed classes cannot proceed to registration but will have to wait for the results of the opposition on the opposed classes.

Third, if assignment or renewal concerning a registration is needed, the whole multi-class application or registration must be assigned or renewed without division. In such circumstances, it will be problematic if the applicant or registrant would like to just assign or renew part of the classes.

Finally, the trademark office has simplified its formality requirements for applications. When the same applicant files applications in several classes, one executed power of attorney is sufficient. Separate powers of attorney for each application are no longer necessary. Furthermore, single-class and multi-class trademark applications incur the same official fees.

Therefore, filing the application in a multi-class way in China will not be a better choice. Instead, filing the application in a single-class way is recommended under current Chinese practice.

Ensure Proper Descriptions When Claiming Priority

According to Chinese trademark law, where an applicant, within six months from the date it applies for registration of its trademark for the first time in a foreign country, again applies in China for registration of the same trademark for the same kind of goods or services, it may, in accordance with any agreement concluded between the foreign country and China or any international treaty to which both countries are parties, or on the basis of the priority principle mutually accepted, enjoy priority.

The CNIPA is very strict on the examination of priority. If priority is claimed for a new trademark application in China, make sure it meets the CNIPA’s requirements. First, all the information should be kept in accordance with that appearing on the priority document, i.e., name and address of the applicant, print of the mark (with color or not), class, and descriptions of designated goods and services. Second, the original certified priority document is required. If the same cannot be submitted together with the Chinese application, it can be supplemented within three months from the filing date of the application.

Since the CNIPA is also strict on the descriptions of designated goods and services, it will issue official notification for amendment of designated goods and services if the descriptions are nonstandard. If priority is claimed for a Chinese application claiming foreign priority and if such notification is issued, the applicant can make amendment to the descriptions. If the descriptions of designated goods and services after amendment are accepted by the CNIPA, the application will be officially accepted and enter into substantive examination procedure. In such circumstances, the priority claimed will not be affected by the amendment of descriptions of designated goods and services. However, if such amendments are made before the application claiming foreign priority is filed, i.e., the application is filed with standard descriptions different from the priority, the priority claimed probably will not be accepted by the CNIPA. Therefore, it is recommended to file a Chinese trademark application with the designated goods and services that are the same as those in the priority application, even if the descriptions are nonstandard, and to make amendments later on during prosecution.

Keep Sufficient Use Evidence

In recent years, the total number of new trademark applications in China has been increasing tremendously, with China ranking first in the world for 16 consecutive years until 2018. According to statistics of the CNIPA, in 2018, more than 7.3 million new national trademark applications were filed in China.

However, trademark resources are not unlimited, and thus it is becoming more and more difficult to register a trademark in China. Nonuse cancellation has become a cost-effective weapon to clear prior obstacles. According to Chinese trademark law, after a mark is registered for three years, it is vulnerable to nonuse cancellation, which anyone can initiate. For nonuse cancellation, the burden of providing evidence is on the registrant. If no effective evidence can be provided and there is no justifiable reason for nonuse of a registered mark, the registered mark will be canceled accordingly.

The following key information must be included in the use evidence:

  • User: The user of the mark should be the trademark owner or its authorized party.
  • Date: The use of the mark should be within the three years prior to the date on which the nonuse cancellation is initiated.
  • Mark: The mark in use should be the same as registered.
  • Goods/Services: The goods/services on which the mark is used should be within the protection scope of the trademark registration.
  • Territory: China.

Specific forms of use of a trademark on goods include:

  • Attaching the trademark to the goods, goods packaging, container, label, etc., or using it on the goods additional label, goods manual, instruction manual, price list, etc.;
  • Using the trademark in trading instruments linked to the sale of goods, including goods sales contracts, invoices, bills, receipts, import and export inspection and quarantine certificates, customs declaration documents, etc.;
  • Using the trademark on media such as radio and television, or in publicly issued publications, as well as advertisements in the form of billboards, postal advertisements, or other advertising methods for trademarks or goods on which the trademark is used;
  • Using the trademark in exhibitions and fairs, including printed materials and other materials provided at exhibitions and fairs; and
  • Other forms of use of trademarks that are in compliance with the law.

Specific forms of use of a trademark for services include:

  • Using the trademark directly at the services location, including in introductory manuals for services, signage for services venues, store decoration, staff clothing, posters, menus, price lists, lotteries, office stationery, letterheads, and other items related to the designated services;
  • Using the trademark on documents related to the services, such as invoices, remittance documents, service agreements, maintenance and repair certificates, etc.;
  • Using the trademark on media such as radio and television, or in publicly issued publications, as well as advertisements in the form of billboards, postal advertisements, or other advertising methods for trademarks or services for which the trademark is used;
  • Using the trademark in exhibitions and fairs, including printed materials and other materials provided at exhibitions and fairs; and
  • Other forms of use of trademarks that are in compliance with the law.

Use of trademarks in the following situations is not considered use in the legal sense:

  • Announcement of trademark registration information or declaration of trademark registrant’s exclusive right to use its registered trademark;
  • Use not in public trading fields;
  • Use as a complimentary gift;
  • Transfer or license behavior only without actual use; and
  • Symbolic use just for the purpose of maintaining trademark registration.

Therefore, it is recommended that trademark registrants keep sufficient use evidence. Evidence in diversified forms, over a long period, and with extensive geographic scope in China would be more persuasive to the examiners in nonuse cancellation procedures.

Conclusion

As the Chinese market is becoming more attractive and more important for foreign businesses, it is crucial to protect their trademark rights in an effective way. Developing better trademark protection strategies and maintaining the stability of registered trademark rights will provide foreign businesses with more favorable opportunities in China.

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Nina Li is a partner at IP March (formerly Co-Talent Intellectual Property Firm) in Beijing, China. She specializes in matters related to trademark, copyright, domain name, and custom protection.