Australia: Recent amendments to Chinese trade mark legislation

These days, most organisations that undertake manufacturing work will have links with China. Of course, China is not just a destination for manufacturing; it is also rapidly becoming a consumer market that many brands are keen to participate in. Although China offers incredible opportunities for businesses, companies that do not take steps to adequately protect their brands may fall victim to counterfeiting and trademark squatting.

In contrast to Australia, which is a first–to use the mark jurisdiction, China's trade mark system is first-to-file. In the past, this has created a situation where brandjackers have been able to register marks such as Hermes, Chivas Regal and iPad, and hold out the genuine brand owners from their brands.


But China's trade mark landscape is changing. Amendments that came into force on 1 May 2014, require trade mark applications to be made in good faith. While China is home to entities that have been set up to prolifically apply for famous marks, now if entities become known as serial infringers, they may be be banned from applying in future, and may even face fines.

E-filing and multi-class applications have also been opened up and renewals can now be filed 12 months before a trade mark expires.

This has made the process more affordable for applicants who previously had to file multiple applications to secure protection across a number of classes. The new legislation has streamlined the process. Applications must now be assessed by the Chinese trade marks office within nine months, and appeals determined within 12 months.

The amendments have also introduced sound trademarks.

Opposition and remedies

The opposition process has also changed under the new amendments. Now, if an opposition is unsuccessful, it cannot be appealed. This change is controversial because a genuine owner that unsuccessfully opposes a bad faith applicant would be unable to appeal that decision. However, it's likely to be read in conjunction with the new requirement for all applications to be made in good faith, which is intended to assist genuine brand holders. Once the bad faith applications have been filtered out of the system, it's unlikely to be an issue in the long term, as the genuine brand owner will be able to use the bad faith provisions to challenge any new application.

China offers a number of avenues that are not available in Australia. For example, companies who have well-known brands or trade mark registrations can request the Administration for Industry and Commerce (AIC) to take direct action against the infringer. This approach is particularly useful for dealing with online counterfeiting as the AIC's Internet network department can have sites selling counterfeit goods taken down. The AIC also conducts raids on factories where counterfeit goods are being manufactured, and they can seize goods, issue fines and cancel business licences. Despite these broad powers, it's not a total solution for brand owners. The AIC doesn't award damages or costs. If the brand owner wants to recover damages and costs, those remedies must be pursued by a civil action through the courts. The new amendments have raised the range for damages to US$80,000 to US$500,000, with the possibility of multiplying the damages by up to three times if there is also a bad faith element.

Exceptions to infringement

In Australia, where something is deceptively similar, there is a requirement that there is an element of confusion for the infringement claim to be made good. A similar provision has now been included in the Chinese legislation. The amendments have also created an exception to infringement for well-known marks, which is similar to the honest concurrent use provision in Australia. If the owner of the work has used a mark and has a high level of use and recognition in China before the registered trade mark, that may be a sufficient exemption to infringement.

Whether use by an Original Equipment Manufacturer (OEM) of a trade mark not owned by it constitutes infringement has long been debated. In Shenda vs. Jolida, the Shanghai courts held that OEM trade mark use constitutes an exception to infringement. This meant that the genuine overseas owner (who had not registered its trade marks in China) would not be infringing the rights of the brandjacker (who registered those trade mark rights in China), if those goods were manufactured solely for the purpose of export, and would be able to export its OEM goods without fear of Customs seizure. However, the Guangdong courts have taken a contrary view and held that OEM trade mark use is infringing use.

The new law may clarify this inconsistency as it now stipulates that use of a trade mark occurs when that trade mark is used on goods, packages, containers or in trading documents, advertising, exhibitions or any other business activities "which identify the source of the goods". This is because, arguably, OEM use may not be considered by the courts to be "use" by the OEM as the products manufactured by the OEM are not sold by the OEM in China, and therefore do not identify to consumers in China "the source of the goods".

The full impact of these amendments, particularly those around enforcement and damages, may not be known until new cases come through the system. Nevertheless, organisations that are currently doing business in China, or expect to enter China in the next few years, should file a trade mark application as soon as possible to ensure protection. Brand protection in China requires companies to think broadly about how they intend to do business in the future, what brands they will use and how those brands will be used. Logos, plain English word marks and Chinese character word marks should all be registered.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.