China: China's New Trademark Law

Last Updated: 15 October 2013
Article by Chiang Ling Li and Haifeng Huang

China's new Trademark Law has been issued and will become effective on May 1, 2014. Important changes in the areas of anti-piracy, prosecution, enforcement, well-known mark determination and usage, opposition, and cancellation have been made. Foreign companies and their counsel should be aware of these changes so that rights and interests are not prejudiced and opportunities are not missed.

The significant changes include:

  • Strengthened protection against piracy
  • Shortened trademark prosecution times
  • Sound marks and multiple class trademark applications made available
  • Strengthened well-known mark protection
  • Narrowed legal standing for oppositions and invalidation
  • A mark proceeding to registration if the opposition fails at the first level of adjudication at the Trademark Office
  • Increased fines, compensation, and statutory damage against infringement


Article 7 of the new Trademark Law was added for attacking trademark piracy. Article 7 provides that the "application for registration and use of a trademark shall be based on the principle of good faith." This new Article 7 was copied from Article 4 of China's Civil Code and hence was already existing law.

Further, the existing Trademark Law already has provisions against piracy or bad-faith trademark registration. Specifically, Article 32 provides that: "The trademark application shall neither infringe upon another party's prior existing rights, nor be an improper means to register a trademark that is already in use by another party and enjoys substantial influence."

Article 19 of the new Trademark Law adds provisions prohibiting trademark agents from assisting clients engaging in trademark piracy: "The trademark agency knows or has already known that, where the client applies for a trademark that falls into Article 15 and Article 32 hereof, the trademark agency shall not accept the entrustment...."

As mentioned above, Article 32 prohibits trademark piracy or bad faith trademark registration. Article 19 should to some extent discourage trademark agents from advising clients to pirate third parties' well-known marks.

In the last few years, although there have been a handful of cases where the Chinese Trademark Office and the Chinese Trademark Review and Adjudication Board examiners refused the registration of pirated marks, many rightful owners failed in opposition and cancellation proceedings usually because the rightful owners had not submitted evidence meeting the high evidentiary standards required by the examiners.

It remains to be seen whether the new articles will indeed result in examiners vigorously attacking piracy. The changes in the opposition and cancellation procedures (in particular, applications proceeding to registration upon oppositions failing at the first review by the Chinese Trademark Office) will be counterproductive to anti-piracy unless examiners have the political will to refuse registration of pirate applications.


Sound marks are now registrable, but additional items related to the Chinese government (including the Chinese national anthem, the logo and theme song of the People's Liberation Army, and the names and logos of Chinese Central Government agencies) have become unregistrable.

The new Trademark Law allows a trademark application to cover more than one class of goods and services.

Currently, the timeline for most trademark cases, notably oppositions, cancellations, and reviews and appeals before the Chinese Trademark Office and the Chinese Trademark Review and Adjudication Board, can be a lengthy one. The new Trademark Law sets out specific time limits for the completion of cases. This should improve the length of the various trademark prosecution proceedings.


The assignment provision in the Implementing Regulation to the existing Trademark Law has been moved to the new Trademark Law.

Assignment of China-registered marks or pending applications requires approval by the Chinese Trademark Office. The assignor and assignee must enter into an assignment agreement and jointly file an application for approving the assignment with the Trademark Office. The filing of the application is not merely an act of recordation; it is a genuine approval process. After an assignment of a mark has been approved, the assignment will be gazetted. The assignee will then enjoy the exclusive right to use the mark from the date of gazetting.

The Trademark Office can reject an assignment on one of the following two grounds: (i) not all of the assignor's identical or similar marks covering identical or similar goods or services are being assigned simultaneously; and (ii) "such assignment may cause mistaken recognition or confusion or have other negative effects."

The risk associated with the first ground may be averted by conducting due diligence and appropriate searches.

The second ground involves undefined terms that can be subjectively interpreted by the Trademark Office. In this regard, it is noteworthy that a document titled "Opinion Concerning the Question of the Use of Trademarks by Chinese-Foreign Joint Ventures and the Assignment of Trademarks to Foreign Parties," issued on February 2, 1993, stipulates that the assignment of geographical indications to non-PRC entities is considered as something that would have a "negative effect." In the Opinion, the Trademark Office states that the "joint use of trademarks in joint ventures with foreign businesses and the assignment of marks (to foreigners) should be studied in earnest and handled with great care." This discretion of the Chinese Trademark Office allows it to refuse approving assignment of important marks owned by Chinese parties to foreign parties.

In the decade-long dispute between Danone and Wahaha, Wahaha signed a contract transferring its Wahaha mark, which was appraised at 100 million RMB, to the joint venture invested in by Wahaha and a Singapore company (which in turn was owned by Danone and a Hong Kong company). However, the Chinese Trademark Office refused to approve the trademark assignment on the grounds that the mark was a well-known mark of a Chinese state-owned enterprise. The assignment of the mark was consequently ineffective even though the parties signed the transfer contract.

Given this discretion of the Chinese Trademark Office, it is important that acquisitions are strategically planned to avoid risks posed by the discretion. This change should be noted by foreign companies and their counsel, particularly those engaging in mergers and acquisitions in China.

Well-Known Mark

In the past 10 years, there have been misuses of the well-known mark system in China. For example, some companies have commenced fake litigation or cases to acquire well-known mark determination. The Chinese courts and trademark authorities were usually reluctant to make a determination on whether a mark should be accorded well-known mark status. As a result, the Chinese courts and trademark authorities tended not to make a determination if possible, deciding the cases on other grounds, for example.

Now, however, Article 14 of the new Trademark Law provides that well-known mark determination should be made as needed. In an attempt to counter misuses of well-known marks, the new Trademark Law prohibits any use of well-known mark designations on products, packaging, or containers, or in advertisements or other commercial activities.

It remains to be seen whether the new Trademark Law will actually result in the Chinese trademark authorities and courts making determinations of well-known mark status in cases where such determination is needed.

Standing in Opposition and Invalidation Proceedings

Aside from registrability issues, the new Trademark Law no longer allows parties that are not prior right holders or interested parties to file oppositions or invalidations.

Oftentimes there is a need for third parties to file oppositions or invalidations. For example, to prevent retaliation, a party may wish to have oppositions or invalidations filed in the name of an unrelated third party in order to keep its identity confidential. Once the new Trademark Law comes into effect, that option will no longer be available.


An important change to the Trademark Law is that if an opposition fails at the Trademark Office level, which is the first level of review for an opposition, the mark would immediately proceed to registration. This is a drastic change from the current Trademark Law, where the opponent in such a situation may appeal to the Trademark Review and Adjudication Board and apply for judicial review at two levels of court.

Unless the Chinese Trademark Office examiners are willing to take up the fight against pirates, this change will fuel piracy as the registration of a pirated mark would embolden the pirates to hold legitimate right holders for ransom.

A key strategic point for foreign companies and their counsel to note is that this change elevates the importance of the evidence for supporting oppositions. It is very important that sufficient use, fame, and other evidence for supporting oppositions is produced for oppositions.

From the perspective of the World Trade Organization document "Agreement on Trade-Related Aspects of Intellectual Property Rights," to which China is a party, it is unclear whether the removal of the appeal and judicial review rights under the new Trademark Law is a violation of Article 41 of that Agreement:

... 4. Parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions and, subject to jurisdictional provisions in a Member's law concerning the importance of a case, of at least the legal aspects of initial judicial decisions on the merits of a case....


The new Trademark Law has in general increased the fines against infringers:

Article 60 ... Where the infringement is confirmed, the administrative department for industry and commerce shall order the infringer to cease such infringement, confiscate and destroy the infringing goods and tools used in producing such goods or forging logos of the registered trademark. In the event of illegal business revenue of over RMB 50,000, a fine up to five times of the revenue may be imposed; in the event of no illegal business revenue or illegal business revenue of less than RMB 50,000, a fine up to RMB 250,000 may be imposed; in the event of trademark infringement of more than two times within five years or other serious circumstances, a heavier punishment shall be given. Where a seller with no knowledge of its infringing goods can prove the legality of acquiring such goods and point out the provider, the administrative department for industry and commerce shall order the seller to cease selling its goods....

Normally, compensation to right holders is calculated based on the loss suffered by the right holders or (if the loss suffered is hard to determine) the gain reaped by the infringers. If such loss and gain are hard to determine, compensation may be calculated based on a multiple of the license fees. For seriously malicious infringers, compensation may be one to three times the compensation calculated under the above methods. The statutory damage against infringers increased to RMB 3 million.

The increased fines, compensation, and statutory damage should still lack deterrence value against infringement in light of the cost of enforcement and the huge profit from infringement. It is said that it is less risky and more profitable to engage in intellectual property infringement than to traffic narcotics.


It is expected that the implementing regulation to the new Trademark Law will be issued soon to provide details on the implementation of the provisions of the new Trademark Law.

In the meantime, infringement and piracy continue to be rampant in China. Whether the new Trademark Law with its increased fines and statutory damages and the incorporation of the good faith principle from the Civil Code will be useful for fighting piracy would depend on whether the trademark authorities in China have the political will to seize on the opportunity to fight piracy and infringement.

Nevertheless, the important message to foreign companies and their counsel is that bolstering their trademark portfolios is critical. If foreign companies' trademark portfolios are strong, then foreign companies would not need to be at the mercy of pirates and the narrowed standing for oppositions and invalidations, and they can effectively fight infringement.

The new Trademark Law ostensibly provides opportunities to obtain well-known mark status determination. Obtaining well-known mark status is another very useful tool to fight piracy and infringement, and foreign companies should consider seizing opportunities in this regard.

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.

Similar Articles
Relevancy Powered by MondaqAI
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”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions