On November 22, 2021, the China National Intellectual Administration (CNIPA) released the new guidelines on trademark examination and revision.
The guidelines come into effect on January 1, 2022. According to the CNIPA, the guidelines aim to regulate trademark examination procedures and ensure consistency in the application of laws and regulations.
The publication of the guidelines comes at a good time to take into account the change in Chinese trademark law and the continued increase in trademark filings.
The guidelines include an all-new section of guidance notices on formality examination and procedures for trademark applications, oppositions, invalidations, reconsiderations, cancellations, classification of goods/services, specification of constituent elements of trademarks for trademark search, examination as to form of applications for change of trademark ownership, trademark renewal, formal examination of Madrid trademarks and other matters procedure relating to trademark cases.
The guidelines have also enriched the guidance on the substantive examination of trademark cases, in particular on key issues such as the examination of trademarks in bad faith without intention to use, as stipulated in Article 4 of China’s amended trademark law, trademarks contrary to public order or morality, geographical or state name trademarks and the protection of well-known marks. The guidelines also provide various practical examples to illustrate the guiding opinions on the application of specific articles of Chinese trademark law.
Mark of bad faith without intention of use
According to Article 4 of China’s amended trademark law, “trademark applications filed in bad faith without intention of use shall be rejected”. How to determine if a trademark application is filed in bad faith without intention of use?
According to the Guidelines, “without intention to use” refers to situations where the applicant has no real intention to use the mark, or does not intend to use the mark, or he there is no possibility that the applicant will use the mark on the basis of reasonable inference. The guidelines provide 9 specific situations that constitute “bad faith trademarks without intention to use” in Article 4 of China’s Trademark Law.
The guidelines also provide that the following two situations do not belong to “bad faith marks without intention of use” in Article 4:
1. The applicant files marks identical or similar to its main mark in different classes for defensive purposes;
2. The applicant deposits a moderate number of points for future activities.
Marks contrary to public order or morality
The guidelines point out that the first paragraph of Article 10 of China’s Trademark Law prohibits the use of signs harmful to public order, morality and other public interests as trademarks.
A trademark application containing these signs will be subject to rigorous examination and its registration and use will in principle be prohibited. If a sign has several meanings or modes of use, when one of the meanings or modes of use is easy to make the public believe that it comes under the circumstances provided for in paragraph 1 of this article, it may be considered as infringing the provisions of that paragraph. The specific mode of use of the sign is generally not taken into account.
Mark of a geographical name
The guidelines point out that the distinctive character of geographical names as trademarks is not strong and that they could be misleading.
Although administrative divisions below the county level or foreign geographical names unknown to the public in China are not prohibited from being used as trademarks, if the corresponding regions are famous for producing certain goods or providing certain services, it is always necessary to thoroughly examine whether the signs are misleading in relation to the designated goods and services.
Trademark of a state name
According to Article 10 of China’s Trademark Law, applications that are identical or similar to state names of foreign countries shall not be used as trademarks. However, with the consent of the government of that country, the prohibition provision generally does not apply.
The applicant must submit written documents to show that the government of that country consents to the registration of the mark. When the applicant has obtained the registration of the mark on identical or similar goods and services in the foreign country, it is deemed that the foreign government has given its consent.
However, if a foreign government clearly indicates that registration of the mark in its country is not considered authorization, or if it has other explicit conditions of authorization, a registration of the mark in that country does not will not be considered to have the consent of the foreign government.
Protection of well-known marks
With respect to applying for recognition of a well-known mark for the second time or more, the guidelines provide that:
• whether the mark applied for has a history of protection as a well-known mark;
• if the well-known owner of the mark has provided evidence demonstrating that the well-known status of the mark can extend to the present case, whereas the scope of protection in the present case is basically the same as the previous one; and
• the other party has no objection to the notorious status, or does not have sufficient evidence to support its objection,
then the well-known request for protection can be granted, based on the protection file and in combination with the evidence in the file.