China: Survey Questions For Chambers Global Practice Guide On Trade Marks

Last Updated: 5 January 2017
Article by Xiaowei Wei, Bin Zhang and Lei Fu

TYPES OF TRADE MARKS & REGISTRATION

ARE THERE DIFFERENT TYPES OF TRADE MARKS (OR OTHER SIGNS OR SOURCE-IDENTIFIERS) IN YOUR LEGAL SYSTEM (FOR INSTANCE, REGISTERED/UNREGISTERED, SERVICE MARKS, CERTIFICATION MARKS, COLLECTIVE MARKS, FAMOUS MARKS, TRADE DRESS, COMPANY AND TRADE NAMES)? ARE RIGHTS IN SUCH TRADEMARKS BASED ON STATUTORY LAW OR CASE LAW, OR BOTH?

In China's legal system, there' re different types of trademarks/service marks, for example, unregistered marks, registered marks, certification marks and collective marks.

According to Article 8 of the China Trademark Law, any sign, capable of distinguishing the goods or services of one natural person, legal person or any other organization from those of other persons, including words, devices, letters, numerals, three-dimensional signs, combination of colours, sounds, etc., as well as the combination of such signs, shall be eligible for application for registration as a trademark.

Trade dress, company names and trade names are not stipulated types of trademarks in accordance with the China Trademark Law, but they can also be protected under certain circumstances, and they mainly protected by Anti-unfair Competition Law.

All rights in such trademarks are based on statutory law, rather than case law.

IS THERE A TRADE MARK REGISTER? IF SO, IS IT PUBLICLY AVAILABLE? ARE THERE DIFFERENT TYPES OF REGISTERS? WITH THE ANSWER TO QUESTION 1 IN MIND, ARE THERE OTHER REGISTERS THAT OUGHT TO BE SEARCHED, FOR INSTANCE COMPANY NAME REGISTERS?

The China Trademark Office (referred to as CTMO hereafter) is responsible for the registration and administration of trademarks in China. The CTMO has a publicly available online database: http://sbcx.saic.gov.cn:9080/tmois/wscxsy_getIndex.xhtml from which the trademarks filed with the CTMO can be searched. Before filing a new trademark application, a prior trademark search can be conducted on the website. However, please bear in mind that as CTMO needs time to process the applications and update its database, national applications filed in about the past 6 months and international applications designating China filed in about the past 8 months might not be located.

For trademark application, only the search on the database of the CTMO is necessary. No other register, for instance company name register, ought to be searched. Company name is registered by commercial register system and it is not be searched by the CTMO when conducting substantial examination in trademark registration process.

WHAT ARE THE FORMAL REQUIREMENTS TO REGISTER A TRADE MARK? HOW MAY RIGHTS IN A TRADE MARK OTHERWISE ARISE?

The formal requirements to register a trademark include the following aspects:

Name and address of the applicant;

Clear trademark sample;

Class and goods/services items covered;

Power of attorney signed by the applicant, if the application is to be filed through trademark agent;

A copy of the commercial registry (certificate of good standing) for company applicant, or a copy of the passport or ID card for individual applicant.

Besides registration, the prior use of a trademark can also be protected in China. For example, a bona fide prior use of an unregistered mark can defend against the tort claim of infringement. An unregistered well-known trademark can be protected against copy or imitation by third party on similar goods/services, through oppositions or invalidations, as stipulated by the China Trademark Law. What's more, if a mark has prior use and has gained certain reputation, then a rush registration of the mark on similar goods/services by a third party is not allowed, as according to Article 32 of the China Trademark Law.

The trademark owner has exclusive right over its registered trademark. The exclusive right to use a registered trademark is limited to the trademark which has been registered and to the goods in respect of which the registration has been made.

WHO CAN REGISTER A TRADE MARK (E.G. INDIVIDUALS, LEGAL ENTITIES, TRADE BODIES ETC)?

Any natural person, legal person or other organization can apply for trademark registration with the CTMO.

WHAT TYPES OF SIGNS CAN BE REGISTERED AND/OR PROTECTED AS A TRADE MARK (E.G. WORDS, IMAGES, SOUNDS, SHAPES, COLOURS, SCENTS ETC.)?

Any sign, capable of distinguishing the goods or services of one natural person, legal person or any other organization from those of other persons, including words, devices, letters, numerals, three-dimensional signs, combination of colours, sounds, etc., as well as the combination of such signs, shall be eligible for application for registration as a trademark. Scent cannot be registered as a trade mark yet in China.

DOES YOUR LEGAL SYSTEM RECOGNIZE OTHER RIGHTS TO SIGNS OR SOURCE-IDENTIFIERS BESIDES TRADE MARKS, E.G., RIGHTS TO COMPANY NAMES, TRADE NAMES OR DOMAIN NAMES AND, IF SO, HOW DO SUCH RIGHTS ARISE?

Apart from trademarks, company names, trade names and well-known commodity's specific name, packaging and decorating can also be protected, which is mainly stipulated by Anti-unfair competition Law.

Above mentioned rights are mainly arise from extensive and long-time use and promotion in China.

PLEASE DESCRIBE THE REGISTRATION PROCEDURE OF A TRADE MARK (IF APPLICABLE). DOES YOUR LEGAL SYSTEM ALLOW MULTI-CLASS APPLICATIONS?

After an application for registration of trademark is filed with the CTMO, the CTMO will conduct formal examination, especially with respect to the goods/services items. If the goods/services items are not standard, the CTMO will issue notification of amendment and request the applicant to make a response within 30 days since receipt of the notification. If the application meet the formal requirement, the CTMO usually issue filing receipt in about 3 months. But if there's notification of amendment, the CTMO will only issue official filing receipt after the amended goods/services can be accepted. Per the current practice, there's only one chance to amend the goods/services. If the goods/services after amendment is still unacceptable, the CTMO may issue unacceptance notice to the application, without issuing another notification of amendment.

The CTMO then conducts substantial examination. The legitimate examination limit for new trademark application is 9 months. The CTMO shall either refuse a mark or publish it within the examination limit. If there's no opposition within 3 month's opposition period, the mark will be finally registered in China.

After the amendment of the China Trademark Law since May 1, 2014, multi-class application is accepted by the CTMO. There's no cost advantage for multi-class application compared with that for separate trademark application. After a multi-class application is registered, it is not allowed to be divided. So, if there's an assignment for the mark, all classes for the multi-class application shall be assigned in a lump.

DOES YOUR SYSTEM REQUIRE USE IN COMMERCE OF THE APPLIED FOR MARK TO BE DEMONSTRATED AS OF THE DATE OF FILING OF THE APPLICATION? IF YOU HAVE SUCH A SYSTEM, ARE YOU ABLE TO PROCEED WITH THE APPLICATION ON THE BASIS OF AN INTENT TO USE FOR A PERIOD OF TIME? PLEASE DESCRIBE THE BASIC STRUCTURE OF YOUR SYSTEM, INCLUDING ANY RENEWALS AND OFFICIAL FEES ASSOCIATED WITH THAT.

China does not require use in commerce or an intent to use for trademark application.

After registered, a trademark can be valid for 10 years since the registration date of the mark. If the registrant wants to renew the mark for another 10 years, a renewal application can be filed within 12 months before the renewal due date or in the grace period in 6 months after the renewal date.

The official fee for trademark renewal within in renewal due date is RMB2,000 (about USD307). If the renewal application is filed in the grace period, the CTMO will additional charge RMB500 (about USD77).

DOES YOUR SYSTEM ALLOW FOR THE REGISTRATION OF SERIES MARKS, I.E. A NUMBER OF TRADE MARKS WITHIN THE SAME APPLICATION WHICH RESEMBLE EACH OTHER TO SOME RESPECT, POSSIBLY DIFFERING ONLY AS TO NON-DISTINCTIVE ELEMENTS WHICH DO NOT AFFECT THE CHARACTER OF THE OVERALL MARK?

China does NOT allow for registration of series marks, i.e. a number of trademarks within the same application which resemble each other to some respect. Separate trademark applications shall be filed with the CTMO if the applicant wants to protect all of the series marks.

ASSUMING THERE IS AN APPLICATION FOR REGISTRATION PROCESS, HOW LONG DOES IT TYPICALLY LAST? DOES THE APPLICANT NEED REPRESENTATION (E.G. AN ATTORNEY) TO INITIATE THE REGISTRATION PROCEDURE? WHAT ARE THE TYPICAL OFFICE AND ATTORNEY FEES FOR A SINGLE WORD MARK IN ONE CLASS?

The legitimate examination period for a new trademark application is 9 months without extension, which means, the CTMO shall approve or refuse the trademark application within 9 months since the filing of the application. It takes about 1 year from filing the application to finally get registered.

For Chinese applicant, the application can be filed by the applicant itself or through a trademark agent as recorded with the CTMO. But if the applicant is a foreign applicant, trademark application must be filed through a trademark agent.

The official fees for one trademark application in one class with no more than 10 items of goods/services are RMB600(about USD92) for one mark in one class. If the goods/services exceed 10 items, the CTMO will charge additional RMB60(about USD9.2) for each item since the 11th as official fees.

UNDER WHAT CIRCUMSTANCES CAN THE REGISTRATION OF A TRADE MARK BE REFUSED BY THE TRADE MARK OFFICE BASED ON ABSOLUTE GROUNDS (E.G. DESCRIPTIVE CHARACTER OF THE MARK, LACK OF DISTINCTIVENESS, MISLEADING CHARACTER, APPLICANT ACTING IN BAD FAITH)?

A trademark will be refused by the CTMO based on absolute grounds, such as descriptive character of the mark, lack of distinctiveness, misleading character. Applicant acting in bad faith is not an absolute grounds for refusal of a mark by the CTMO in substantial examination.

The absolute refusal grounds are mainly stipulated in Articles 10, 11 and 12 of the China Trademark Law, as follows:

Article 10. The following signs shall not be used as trademarks:

  1. those identical with or similar to the State name, national flag, national emblem, national anthem, military flag, army emblem, military anthem, or decorations of the People's Republic of China, etc., and those identical with the name or symbol of a central government department of the State, or with the name of the particular place, or with the name or image of the symbolic building, where a central government department of the State is located;
  2. those identical with or similar to the State name, national flag, national emblem or military flag of a foreign country, etc., unless consent has been given by the government of the country;
  3. those identical with or similar to the name, flag or emblem of an international intergovernmental organization, etc., unless consent has been given by the organization or the public is not likely to be misled by such use;
  4. those identical with or similar to an official sign or hallmark indicating control and warranty, unless authorization has been given;
  5. those identical with or similar to the name or symbol of the Red Cross or the Red Crescent;
  6. those having the nature of discrimination against any nationality;
  7. those having the nature of fraud, being liable to mislead the public about the characteristics of the goods such as the quality or the place of origin; or
  8. those detrimental to socialist morality or customs, or having other unhealthy influences.

The geographical name of an administrative division at or above the county level or a foreign geographical name well-known to the public shall not be used as a trademark, unless the geographical name has another meaning or the geographical name is used as a component part of a collective mark or a certification mark; registered trademarks consisting of or containing geographical names shall continue to be valid.

Article 11. The following signs shall not be registered as trademarks:

  1. signs which consist exclusively of the generic names, designs, or model numbers of the goods in respect of which the trademark is used;
  2. signs which consist exclusively of direct indications of the quality, primary raw material, functions, intended purposes, weight, quantity or other characteristics of goods; or
  3. Other signs which are devoid of any distinctive character.

Signs mentioned in the preceding paragraph may be registered as trademarks if they have acquired distinctive character through use and are capable of being readily identified and distinguished.

Article 12. Where a three-dimensional sign is the subject of an application for registration of a trademark, the trademark shall not be registered if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.

IS THERE A PROCESS FOR SEEKING TO OVERCOME ANY OBJECTIONS RAISED BY THE TRADE MARK OFFICE UNDER QUESTION 11, AND IF SO, WHAT WOULD BE THE GENERAL BASIS IN EACH CASE (E.G BY CLAIMING ACQUIRED DISTINCTIVENESS)?

If the mark is refused based on absolute grounds, the applicant has right to file a review on refusal with the China Trademark Review and Adjudication Board (referred to as TRAB hereafter) to present arguments and evidences.

If the mark is refused based on lack of distinctiveness, by claiming acquired distinctiveness, the applicant shall file solid evidence to show that the mark has acquired distinctiveness through use.

DOES THE TRADE MARK OFFICE CONSIDER THE EXISTENCE OF PRIOR RIGHTS IN ITS EXAMINATION OF AN APPLICATION FOR REGISTRATION, AND, IF SO, WHAT TYPES OF PRIOR RIGHTS COULD BE RAISED?

In the CTMO's ex-officio examination, the CTMO will NOT consider the existence of prior rights like trade name right, copyright, name right and etc. in its examination, instead, it only examine whether the mark shall be refused by absolute grounds and/or whether it is in conflict with prior filed or registered similar trademark in the name of other party.

DO THIRD PARTIES HAVE THE RIGHT TO PARTICIPATE DURING THE REGISTRATION PROCEDURE (E.G. BY FILING OPPOSITION PROCEEDINGS OR THIRD PARTY OBSERVATIONS)? IF SO, PLEASE BRIEFLY SUMMARIZE THE APPLICABLE PROCEDURE. DO THIRD PARTIES PARTICIPATING IN THESE PROCEDURES NEED ANY SORT OF STANDING OR COMMERCIAL INTEREST (I.E. CAN ANYONE BRING SUCH AN ACTION, OR DO YOU NEED TO QUALIFY IN SOME RESPECT)?

Third parties cannot file observations during the registration procedure but can file oppositions after the publication of the mark.

Through the substantial examination by the CTMO, if the mark is registrable, the CTMO will publish the mark on Trademark Gazette.

During the 3-month opposition period, any person can file an opposition against a published mark based on absolute grounds. Only prior right owner or interested party can file opposition against a published mark if it is based on prior right. Evidence shall be filed along with the opposition to prove the qualification as prior right owner or interested party.

IS IT POSSIBLE TO REVOKE, CHANGE, AMEND OR CORRECT (OR OTHERWISE CHANGE) AN APPLICATION FOR A TRADE MARK DURING THE PROCESS OF REGISTRATION?

After an application for registration of a trademark is filed with the CTMO, the applicant has right to withdraw the application or remove the registration. It is not allowed to change or amend the trademark sample during the application process or after the mark is registered.

IS IT POSSIBLE TO ASSIGN AN APPLICATION FOR A TRADE MARK OR GRANT A LICENSE IN RELATION TO IT DURING THE APPLICATION PROCESS?

A trademark can be assigned during the application process or after it is registered. For recordal of license contract, only a registered mark can be granted a license.

WHAT ARE THE REMEDIES (IF ANY) AGAINST THE TRADE MARK OFFICE REGARDING A REFUSAL TO REGISTER A TRADE MARK?

If a mark is refused for registration by the CTMO, the only remedy is to file a review on refusal with the TRAB within 15 days since receipt of the refusal.

DOES YOUR LEGAL SYSTEM HAVE A USE REQUIREMENT FOR REGISTERED TRADE MARKS? IF SO, IS THERE A GRACE PERIOD AND HOW LONG IS IT? WHAT ARE THE REQUIREMENTS FOR ESTABLISHING GENUINE USE OF A TRADE MARK?

China encourages the use of a registered trademark. If a mark is not used for 3 consecutive years without justified reasons, it has the risk of being cancelled. But the cancellation is initiated by any third party, not on the CTMO's own initiative.

The use of a trademark, as referred to in the Trademark Law means the use of the trademark on goods, packages or containers of the goods or in trading documents, or the use of the trademark in advertising, exhibition or any other business activities so as to distinguish the origin of goods.

The evidence filed with the CTMO to defence a non-use cancellation shall be the valid trading documents showing that the mark was indeed put into commercial use in Mainland China during the past three years. Thus, contracts, payment proof, invoices and etc. which can form evidence chain to prove the commercial use of the mark are deemed as important evidence to maintain a trademark registration.

IS IT POSSIBLE TO DIVIDE A TRADE MARK APPLICATION? IF SO, WHAT ARE THE REQUIREMENTS?

It is possible to divide a trademark application. But divisional application shall only be filed after a mark is partially refused by the CTMO. The divisional application shall be filed with the CTMO within 15 days since receipt of the refusal notification. The divisional application is irrevocable.

HOW LONG IS THE TERM OF PROTECTION? MAY THE TRADE MARK OWNER RENEW THE TRADE MARK AFTER THE TERM HAS LAPSED? IF SO, UNDER WHAT CIRCUMSTANCES AND WHAT IS THE PROCESS?

A registered mark is valid for 10 years from the registration date. After the expiration date, the trademark owner can still file a renewal within the grace period, i.e., within 6 months after the expiration date. But if no renewal is filed even in the grace period, the mark will be invalid and the trademark owner has no way to restore it. Instead, a new trademark application need to be filed if the trademark owner still wants to protect the mark in China.

WHAT ARE THE REQUIREMENTS FOR AN EXHAUSTION OF TRADE MARK RIGHTS IN YOUR LEGAL SYSTEM?

China sticks to the principle of territoriality. In accordance with the Trademark Law of the PRC, replacing a registered trademark without the consent of the trademark registrant and putting the goods with a substituted trademark into the market shall be regarded as trademark infringement.

Regarding parallel import, there's no specific stipulation in China's trademark law whether parallel import is a trademark infringement or not.

DOES YOUR COUNTRY PARTICIPATE IN THE MADRID SYSTEM, AND ARE THERE ANY PARTICULAR REQUIREMENTS FOR INTERNATIONAL REGISTRATIONS?

China is one of the participating country in the Madrid system.

There's no procedure for notification of amendment for international trademark registration designating China. If the goods/services are unaccepted, the CTMO will refuse the mark and there's no review on refusal based on unacceptance of goods/services description. The applicant has to re-designate the international registration into China.

ASSIGNMENT AND LICENSING

WHAT REQUIREMENTS OR RESTRICTIONS APPLY TO ASSIGNING A TRADE MARK (E.G. IN WRITING, ONLY ONCE REGISTERED, APPROVAL FROM TRADE MARK OFFICE, ETC.)?

If a trademark is assigned, the assignor and the assignee shall sign a written assignment contract. The assignment application shall be filed with the CTMO. The assignment application can be filed against registered marks or marks in the process of application. All identical or similar marks in respect of identical or similar goods/services in the name of the assignor shall be assigned together.

The assignment of a mark shall be published after it has been approved by the CTMO. The assignee shall have the exclusive right to use the trademark from the date of publication.

PLEASE DESCRIBE THE PROCEDURE FOR ASSIGNING A TRADE MARK.

For filing recordal of assignment of a trademark in China, please note the following:

  1. both the assignor and the assignee shall file the application together.
  2. Documents needed are application for assignment signed by both parties, powers of attorney signed by both parties and commercial registry or other documents to show the qualification of both parties.
  3. Usually, the assignment contract is not required by the CTMO.

The CTMO usually complete the assignment process in about 8~12 months.

DOES THE ASSIGNMENT NEED TO BE REGISTERED OR RECORDED IN SOME WAY AT THE TRADE MARK OFFICE? WHAT HAPPENS IF IT IS NOT, AND WHAT RISKS EXIST DURING THE GAP BETWEEN THE ASSIGNMENT TAKING PLACE AND ITS REGISTRATION, IF ANY?

The assignment need to be recorded with the CTMO. After the approval of the assignment by the CTMO, the CTMO will publish the assignment in Trademark Gazette. Certificate of assignment will be issued by the CTMO to both the assignor and the assignee.

Only after the approval of the CTMO can the assignee be the trademark owner in China. Before the approval of the CTMO, the assignor is still the trademark owner of the mark in China.

CAN A TRADE MARK BE GIVEN AS A SECURITY, BE SUBJECT TO RIGHTS IN REM, ASSIGNED BY WAY OF SECURITY, OR BE LEVIED IN EXECUTION?

Trademark is a kind of intellectual property. It can be subject to rights in rem, assigned by way of security, or be levied in execution.

Pledgor and pledgee shall conclude a written contract regarding the pledge of a trademark which is assignable. Same or similar marks on the same or similar goods/services shall also be included in the pledge contract. Pledge registration shall be filed with the CTMO.

WHAT REQUIREMENTS OR RESTRICTIONS APPLY TO LICENSING A TRADE MARK (E.G. IN WRITING, ONLY ONCE REGISTERED, APPROVAL FROM TRADE MARK OFFICE, ETC.)? WHAT KIND OF LICENSE CAN BE GRANTED, E.G. EXCLUSIVE LICENSE, NON-EXCLUSIVE LICENSE, SOLE LICENSE, ETC?

For recordal purpose, the license contract shall be in written and shall be filed against only registered marks, as required by the CTMO.

But for license of unregistered marks, there's no specific provision by the China Trademark Law. Usually, contract between the licensor and the licensee regarding unregistered mark can also be deemed as valid.

All three types of license, namely, exclusive license, non-exclusive license, sole license, can be recorded.

PLEASE DESCRIBE THE PROCEDURE FOR LICENSING A TRADE MARK.

The recordal of license shall be filed by the licensor;

Documents needed for such recordal are application form, power of attorney, commercial registry of both the licensor and the licensee, and the original or notarized license contract;

Information such as licensor, licensee, license term, licensed goods/services shall be clear for the recordal.

It takes the CTMO about 8 months to approve the license;

The official fee for recordal of license are RMB300(about USD46).

DOES THE LICENSE NEED TO BE REGISTERED OR RECORDED IN SOME WAY AT THE TRADE MARK OFFICE? WHAT HAPPENS IF IT IS NOT, AND WHAT RISKS EXIST DURING THE GAP BETWEEN THE LICENCE BEING ENTERED INTO AND ITS REGISTRATION, IF ANY?

The license contract comes into effect after the execution of the licenor and the licensee. Recordal of license with the CTMO is required but not compulsive. A trademark license shall not be used against any bona fide third party, if no record therefor is made.

OPPOSITION PROCEDURE

WHAT ARE THE LEGAL GROUNDS AND TIMEFRAMES FOR FILING AN OPPOSITION?

The opposition can be filed based on absolute grounds, such as lack of distinctiveness, misleading as to the characters of the goods/services, having bad social influence and etc. The opposition can also be filed based on prior rights like prior trademark right, well-known trademark, prior use right etc.

An opposition can be filed within 3 months since the publication of a trademark. For international trademark designating China, the deadline for filing the opposition is the last day of the third month since its publication by WIPO.

After filing of the opposition, the CTMO usually issue official filing receipt in about 3 months. It takes the CTMO 12 months to make the decision on opposition. The term can be extended for another 6 months.

WHO MAY FILE AN OPPOSITION? DOES THE OPPONENT NEED REPRESENTATION (E.G. AN ATTORNEY)? WHAT ARE THE AVERAGE OFFICE AND ATTORNEY FEES?

Any person can file the opposition based on absolute grounds. Only prior right owner or interested party can file opposition based on prior rights.

Chinese opponent can file the opposition either personally or through trademark agent recorded with the CTMO. Foreign opponent must file opposition through a trademark agent.

The official fee for filing an opposition is RMB1,000 (about USD154). The attorney fee is mainly charged depending on the complexity of the case, working hours required and etc.

PLEASE DESCRIBE THE OPPOSITION PROCEDURE.

After an opposition is filed, The CTMO will forward the opposition grounds and evidence to the opposed party and request the opposed party to make a response within 30 days since receipt of the notification. There's no evidence-exchange procedure for opposition. The CTMO will not forward the grounds and evidence filed by the opposed party to the opponent for counter-arguments. Instead, the CTMO will make a decision on opposition directly.

PLEASE SET OUT ANY LEGAL REMEDIES AGAINST THE DECISION OF THE TRADE MARK OFFICE, INCLUDING THE LIKELY TIMESCALES OF ANY APPEAL OR SERIES OF APPEALS.

If the decision on opposition is made in favour of the opponent and the opposed mark is decided to be refused for registration, the opposed party has right to file a review on opposition with the TRAB within 15 days since receipt of the decision.

If the decision on opposition is not made in favour of the opponent, and the opposed mark is approved for registration, then the mark is registered. The opponent, instead of filing a review on opposition, has to file an invalidation with the TRAB after the registration of the opposed mark.

The legitimate examination for a review on opposition is 12 months and can be extended for another 6 months.

The legitimate examination for an invalidation is also 12 months and can be extended for another 6 months.

INITIATING A LAWSUIT

WHAT DIFFERENT ACTIONS ARE AVAILABLE TO A TRADE MARK OWNER TO PURSUE INFRINGEMENT? IS THIS THE SAME REGARDLESS OF WHETHER THE MARK IS REGISTERED OR UNREGISTERED?

Trademark registrant could pursue infringement through legal proceedings in the people's court, or request local Administration for Industry and Commerce ("AIC") to take raid actions against the infringer.

The protection on registered trademark and unregistered trademark is different in the PRC. Unregistered trademarks shall be recognized as "well-known" trademarks in order to be protected in accordance with the Trademark Law of the PRC.

BEFORE WHICH COURT(S)/TRIBUNAL(S) CAN A TRADE MARK OWNER INITIATE INFRINGEMENT PROCEEDINGS?

The first instance of trademark infringement cases is generally handled by basic people's court, one exception is that the first instance of the major foreign-related intellectual property related cases is handled by intermediate people's court. The "major foreign-related cases" refers to cases involving a large amount of subject, cases with complicated circumstances, cases with one side consists of a large number of parties, and other cases having a major impact. The litigation initiated against trademark infringement shall be under the jurisdiction of the people's court at the place where the infringement act occurs or at the place of domicile of the defendant. The "place where the infringement act occurs" includes the place where the infringement act is committed and the place where the result of the infringement occurs.

CAN THE ALLEGED INFRINGER START DECLARATORY JUDGEMENT PROCEEDINGS? IN WHAT CIRCUMSTANCES?

The alleged infringer could initiate a lawsuit requesting for confirmation on non-infringement. The lawsuit for confirmation of non-infringement could be filed by a specific party which is warned of infringement by an intellectual property right holder who fails to initiate a lawsuit within a reasonable period.

WHICH COURTS HAVE JURISDICTION TO HEAR TRADE MARK MATTERS AT FIRST, SECOND, AND, IF APPLICABLE, THIRD INSTANCE?

The people's courts apply "final after two trials" systems. The first instance of trademark infringement cases is generally handled by basic people's court; one exception is that the first instance of the major foreign-related intellectual property related cases is handled by intermediate people's court. The second instance is handled the people's court at the next higher level.

The party who deems that an effective judgment or ruling is erroneous may file a petition for retrial with the people's court at the next higher level.

ARE THERE ANY PREREQUISITES TO FILING A LAWSUIT (E.G. ISSUING A FORMAL DEMAND LETTER, WARNING LETTERS, ENGAGING IN MEDIATION, ETC.)?

No, there isn't any prerequisite to filing a lawsuit.

DO THE PARTIES IN TRADE MARK LITIGATION MATTERS NEED TO BE REPRESENTED BY A LAWYER?

It is not required that the parties in trademark litigation need to be represented by a lawyer. According to the regulations of the PRC, the parties may retain one or two persons as litigation representatives and the following persons may serve as a litigation representative: (1) a lawyer or legal service worker at the basic level.; (2) a close relative or staff member of a party; and (3) a citizen recommended by the community of or the entity employing a party or recommended by a relevant social group.

ARE INTERIM OR PRELIMINARY INJUNCTIONS AVAILABLE? IF SO, WHAT ARE THE CIRCUMSTANCES UNDER WHICH AN INTERIM OR PRELIMINARY INJUNCTION IS GRANTED?

The preliminary junctions are available. When the owner of a registered trademark or an interested party has evidence indicating that another person is engaged in or will soon engage in an act of infringement of the former's exclusive right to use his registered trademark and that, unless the act is stopped in a timely manner, irreparable injury will be caused to his legitimate rights and interests, he may, before instituting legal proceedings, apply to the people's court for measures prohibiting the act and preserving the latter's assets in accordance with relevant laws.

The applicant shall provide security and the amount of security shall equals to the amount of property relating to the preservation. After accepting the application, the people's court must issue a ruling within 48 hours and if it rules to take a preliminary injunction/preservative measure, the measure shall be executed immediately. If the applicant fails to institute an action or apply for arbitration in accordance with law within 30 days after the people's court takes the preliminary injunction/preservative, the people's court shall remove the measures.

WHAT CAN A POTENTIAL DEFENDANT DO TO PROTECT ITSELF (E.G. FILE PROTECTIVE BRIEFS, REQUIRE A BOND TO BE POSTED BY THE TRADE MARK OWNER, START DECLARATORY RELIEF OR OTHER PROCEEDINGS IN ANOTHER COURT)?

In a trademark infringement case, the defendant could initiate trademark cancellation or invalidation action with the Trademark Office or Trademark Review and Adjudication Board against the registered trademark involved in the trademark dispute. In the meantime, the defendant could prepare evidences proving its "fair use" of the relevant trademark.

DOES YOUR LEGAL SYSTEM HAVE MECHANISMS BY WHICH A PARTY TO A TRADE MARK MATTER CAN OBTAIN RELEVANT INFORMATION AND EVIDENCE FROM THE OTHER PARTY OR A THIRD PARTY (E.G. DISCLOSURE OR DISCOVERY)? IF SO, PLEASE DESCRIBE SUCH MECHANISMS, AND THE STAGE(S)WHEN THEY CAN BE USED.

Yes.

In accordance with Article 35 of the Lawyers Law of the PRC, an authorized lawyer may apply to the people's court to gather, investigate and take evidence or apply to the people's court for notifying a witness to testify in court. If a lawyer investigates and takes evidence on his own, he may investigate information related to the legal matter handled by the relevant entity or individual.

In accordance with Article 64 of the Civil Procedure Law of the PRC, a people's court shall investigate and collect evidence which a party and its litigation representative are unable to collect for some objective reasons and evidence which the people's court deems necessary for trying a case.

In accordance with Article 67 of the Civil Procedure Law of the PRC, a people's court shall have the authority to investigate and collect evidence from the relevant entities and individuals, and the relevant entities and individuals shall not refuse such investigation and collection of evidence.

DESCRIBE THE INITIAL PLEADING STANDARDS (LEVEL OF DETAIL/PLAUSIBILITY/SPECIFICITY) FOR A COMPLAINT OR OTHER DOCUMENT THAT IS FILED TO INITIATE A LAWSUIT. ARE THERE ANY SPECIAL PROVISIONS FOR LAWSUITS IN TRADE MARK PROCEEDINGS THAT DIFFER FROM NON-INTELLECTUAL PROPERTY PROCEEDINGS? IS IT POSSIBLE TO SUPPLEMENT PLEADINGS WITH ADDITIONAL ARGUMENTS? IF SO, IN WHAT CIRCUMSTANCES?

An action to be instituted must meet all of the following conditions: (1) the plaintiff is a citizen, legal person or any other organization with a direct interest in the case; (2) there is a clear defendant; (3) there are specific claims, facts and reasons; and (4) The case is within the scope of civil actions accepted by the people's courts and under the jurisdiction of the people's court in which the action is instituted.

There isn't any special provisions for lawsuits in trademark proceedings that differ from non-intellectual property proceedings. The trademark infringement litigations are handled in accordance with the Civil Procedure Law of the PRC.

The plaintiff may relinquish or modify its claims.

DOES YOUR LEGAL SYSTEM PERMIT REPRESENTATIVE OR COLLECTIVE ACTIONS (SUCH AS CLASS ACTIONS) FOR TRADE MARK PROCEEDINGS? IF SO, PLEASE DESCRIBE UNDER WHAT CIRCUMSTANCES SUCH ACTIONS ARE PERMITTED.

Yes. Our legal system permits representative actions.

If the parties on one side of a joint action are numerous, such parties may recommend a representative or representatives to participate in the action. The litigation conduct of such representatives shall bind all the parties represented; however, to modify or relinquish any claims, admit any claims of the opposing party or reach a settlement, such representatives must obtain a consent from the parties represented.

If the subject matter of action for each party is of the same kind, the parties on one side of an action are numerous, but the exact number of such parties is uncertain when the action is instituted, the people's court may publish a notice to describe the case and claims and notify right holders to register with the people's court within a certain period of time. The right holders which have registered with the people's court may recommend a representative or representatives to participate in the litigation; and if no representative is recommended, the people's court may determine a representative or representatives in consultation with the right holders which have registered with the people's court.

WHAT RESTRICTIONS ARE THERE ON THE TRADE MARK OWNER ASSERTING ITS RIGHT AGAINST OTHERS (E.G.GROUNDLESS THREATS PROVISIONS, MISUSE/ABUSE, COMPETITION LAW ETC.)?

If the registered trademark contains the common name, design or model of goods, or it has direct indications of the quality, main raw materials, functions, uses, weight, quantity, and other features of goods, or it contains the place name, the trademark owner does not have the right to preclude others from legitimately using the trademark.

If a three dimensional registered trademark comprises a shape resulting from the nature of the goods, a shape of the goods necessary for achieving a technical effect, or a shape to add substantive value to the goods, the trademark owner shall have no right to preclude others from legitimately using such a shape.

If, before a trademark registrant applies for trademark registration, another party has used an identical or similar trademark with a certain reputation on identical or similar goods prior to the trademark registrant, the trademark owner could not preclude such other party from continuing to use the trademark for original purposes, but may require such other party to add a distinctive mark.

INFRINGEMENT

WHO ARE THE NECESSARY PARTIES TO AN ACTION FOR INFRINGEMENT? IS IT POSSIBLE/REQUIRED FOR A THIRD PARTY WHO IS NOT THE TRADE MARK OWNER (EXCLUSIVE/NON-EXCLUSIVE LICENSEE, NON-LICENSEE) TO FILE AN ACTION FOR INFRINGEMENT? IF SO, UNDER WHICH CIRCUMSTANCES? IS IT POSSIBLE FOR A TRADEMARK OWNER TO TAKE ANY ACTION TO STOP INFRINGEMENT BEFORE THE MARK IS REGISTERED?

The trademark owner or the interested party can take action against infringement. The interested party can be licensee for mark concerned or the legitimate successor of the property rights of the trademark.

An exclusive licensee can initiate a lawsuit with the Court directly if the registered trademark right is infringed upon. A sole licensee can file a lawsuit against an infringement with the trademark owner, or file the lawsuit by itself if the trademark owner does not file. With the clear authorization from the trademark owner, a non-exclusive licensee can also file a lawsuit against an infringement.

It is suggested that the trademark owner takes action to stop infringement after the registration of the trademark, unless the trademark owner has adequate evidence to prove that its trademark could be recognized as a "well-known" trademark by people's court in the PRC.

PLEASE EXPLAIN BRIEFLY WHAT FACTORS MUST BE CONSIDERED IN DETERMINING WHETHER THE USE OF A SIGN CONSTITUTES TRADE MARK INFRINGEMENT (E.G. DEGREE OF DISTINCTIVENESS OF OLDER MARK, DEGREE OF SIMILARITY BETWEEN SIGNS AND GOODS/SERVICES CONCERNED)?

The following principles shall be followed while determining whether the use of a sign constitutes trademark infringement:

judging from the common attention of relevant public;

not only compare with the overall appearance, but also the main part of the marks. The objects shall be compared isolated;

the distinctiveness and reputation shall be taken into consideration.

Similar goods means the goods are similar in respect of function, usage, manufacturing section, sales channel and consuming target and etc., or relevant consumers deems they have certain association and likely to be confused. Similar services means the services are similar in respect of service purposes, content, manner, target and etc., or consumers deems they have certain association and likely to be confused.

IS IT NECESSARY TO ESTABLISH THAT THE DEFENDANT HAS USED THE SIGN AS A TRADE MARK, E.G. IN CONTRAST TO A PURELY DESCRIPTIVE USE?

Yes, it is necessary to establish that the defendant has used the sign as a trademark.

In the Trademark Law of the PRC, it is regulated that "use of a trademark" means using a trademark on goods, on the packages or containers of goods, in the trade documents of goods, or for advertisements, exhibitions, and other commercial activities for the purpose of identifying the origin of goods. Trademark infringement acts are defined based on the "use of a trademark". Therefore, it is necessary to establish that the sign is used as a trademark. Nominative and descriptive use is a defence for "trademark fair use".

WHAT DEFENCES AGAINST INFRINGEMENT EXIST (E.G., PRIOR TRADE MARKS, OBJECTION FOR NON-USE, BAD FAITH, FAIR USE, PARODY, OWN NAME DEFENCE, LIMITATION, FORFEITURE, EQUITABLE ESTOPPEL ETC.)

The defences could be based on other prior rights, such as trade name right, copyright or domain names.

The defences could also be based on the following circumstances:

If the registered trademark contains the common name, design or model of goods, or it has direct indications of the quality, main raw materials, functions, uses, weight, quantity, and other features of goods, or it contains the place name, the trademark owner does not have the right to preclude others from legitimately using the trademark.

If a three dimensional registered trademark comprises a shape resulting from the nature of the goods, a shape of the goods necessary for achieving a technical effect, or a shape to add substantive value to the goods, the trademark owner shall have no right to preclude others from legitimately using such a shape.

If, before a trademark registrant applies for trademark registration, another party has used an identical or similar trademark with a certain reputation on identical or similar goods prior to the trademark registrant, the trademark owner could not preclude such other party from continuing to use the trademark for original purposes, but may require such other party to add a distinctive mark.

WHAT IS THE ROLE OF EXPERTS AND/OR SURVEYS, E.G. ABOUT LIKELIHOOD OF CONFUSION, SECONDARY MEANING, GENERICNESS, IF ANY? WHAT IS THE ATTITUDE OF THE COURTS TO SUCH EVIDENCE?

According to the regulations, the parties concerned may apply to the People's court to have one or two persons with professional knowledge to appear in court to make accounts of the specialized questions relating to the case. If the People's court approves such applications, the relevant expenses shall be borne by the party that makes the application. The judges and parties concerned may interrogate the persons with professional knowledge that appear in court. Upon the approval of the People' court, the persons with professional knowledge as applied for by each party concerned may cross-examine the issues concerned in the case. The persons with professional knowledge may inquire of the authenticators.

Generally speaking, the experts and/or survey regarding likelihood of confusion, secondary meaning, genericness are considered an ordinary evidence. Other supporting evidences shall also be submitted.

CAN TRADE MARK INFRINGEMENT CONSTITUTE AN ADMINISTRATIVE OR CRIMINAL OFFENSE OR OTHERWISE BE ENFORCED THROUGH ADMINISTRATIVE OR CRIMINAL CHANNELS? IF YES, PLEASE DESCRIBE THE RELEVANT PROCESS.

Yes. It is clearly regulated in the Trademark Law of the PRC that the Administration for Industry and Commerce ("AIC") shall have the authority to investigate and punish according to the law any infringement upon the right to exclusively use a registered trademark; and those suspected of a crime shall be transferred to the judicial authority in a timely manner according to the law.

Regarding the administrative offence, the trademark registrant could file a complaint with the local Administration for Industry and Commerce ("AIC") when trademark infringement disputes arise. If the AIC handling the dispute determines that an infringement is constituted, it shall order immediate cessation of infringement and confiscate and destroy the infringing goods and the tools mainly used for manufacturing the infringing goods and counterfeiting the labels of the registered trademark, and may impose a fine of not more than five times the illegal business revenues if the amount of illegal business revenues reaches 50,000 yuan or a fine of not more than 250,000 yuan if there is no illegal business revenue or the amount of illegal business revenues is less than 50,000 yuan. If trademark infringement has been committed twice or more within five years or there are other serious circumstances, a heavier punishment shall be imposed. If goods infringing the right to exclusively use a registered trademark are sold without knowledge of such infringement, and the seller is able to prove that the goods are legally acquired and provide the supplier, the AIC shall order cessation of sale.

Regarding the criminal offence, it includes the following three circumstances: (1) Without being licensed by the trademark owner, a party uses a trademark identical with the registered trademark on identical goods, if any crime is constituted, the party shall be subject to criminal liability according to the law in addition to compensating the victim for losses; (2) Where a party forges or manufactures without authorization the labels of a registered trademark of another party or sells the labels of a registered trademark forged or manufactured without authorization, if any crime is constituted, the party shall be subject to criminal liability according to the law in addition to compensating the victim for losses; and (3) Where a party knowingly sells goods on which a registered trademark is falsely used, if any crime is constituted, the party shall be subject to criminal liability according to the law in addition to compensating the victim for losses.

DOES YOUR LEGAL SYSTEM PROVIDE FOR CUSTOMS SEIZURE OF COUNTERFEITS AND PARALLEL IMPORTS? PLEASE DESCRIBE THE RELEVANT PROCESS.

Our legal system provides for customs seizure of counterfeits. China started to adopt customs' protection of IPRs in 1995. For the purpose of customs' protection, the owner of IPRs which might include trademark, patent and copyright being already approved, granted or registered by competent state authorities should record its IPRs with China General Administration of Customs on the basis of each certificate for each recordation. If a designated IPR has been successfully recorded with China General Administration of Customs, the information of the IPR will be added to the official computer system of China General Administration of Customs for share by every customs within Chinese territory. When customs officers carry out routine inspection on imported or exported goods, they would pay more attention to the goods bearing the recorded IPRs. If customs suspect some goods have infringed the recorded IPR, it will notify IPR owner and upon application filed by the IPR owner with remittance of the required security bond, customs will detain the suspected goods. The security bond will be based on the value of the suspected goods.

REVOCATION/CANCELLATION

PLEASE DESCRIBE THE AVAILABLE REMEDIES AND REASONS FOR REVOCATION/CANCELLATION OF A TRADE MARK.

Where a registered trademark has no effectiveness or has bad social influence, or the registration of a trademark has been acquired by fraud or any other unfair means, the Trademark Office shall declare the registered trademark invalid; any other organization or individual may request the Trademark Review and Adjudication Board to declare such a registered trademark invalid.

Where a registered trademark is a copy, imitation or translation of the prior well-known trademark, or it is a misleading geographical indication, or the registrant is an agent or has other relationship with the true owner of the mark, or the registered mark is similar to prior registered or applied mark on similar goods/services, or it is an infringement of other's prior right or a copy of other's mark which has been used and has gained certain reputation, the earlier right owners or any interested party may, within five years from the date of registration, request the Trademark Review and Adjudication Board to declare the registered trademark invalid. Where the registration has been made in bad faith, the owner of a well-known trademark shall not be bound by the five-year time limit.

CAN REVOCATION/CANCELLATION ACTIONS BE BROUGHT BEFORE THE TRADE MARK OFFICE AND/OR BEFORE THE CIVIL COURTS?

The revocation/cancellation can only be brought before the TRAB. If dissatisfied with the decision on revocation/cancellation, an administrative litigation can be filed with the Beijing Intellectual People's Court.

IS THERE ANY STATUTORY LIMITATION OR TIME PERIOD WITHIN WHICH TO FILE REVOCATION/CANCELLATION ACTIONS?

If the revocation/cancellation is filed based on absolute grounds, there's no time limit within in which the revocation/cancellation shall be filed.

If the revocation/cancellation is filed based on prior rights and etc. as described in question 1 above, then the revocation/cancellation shall be filed within 5 years since registration of the disputed mark.

But if the mark was filed in bad faith, a well-known trademark owner is not bounded by 5 year limit.

WHO MAY INITIATE A REVOCATION/CANCELLATION PROCEEDING (E.G. THE OWNER OF A PRIOR TRADE MARK, THIRD PARTIES, THE TRADE MARK OFFICE)? ARE THERE ANY PARTICULAR ADMISSIBILITY/STANDING REQUIREMENTS (E.G. LEGAL OR COMMERCIAL INTEREST)? IF SO, HOW ARE THEY SATISFIED?

If the revocation/cancellation is based on absolute grounds, any person can file the revocation with the TRAB. If the revocation is based on relevant grounds (prior well-known trademark right, prior similar marks, other prior rights and etc.), only the prior right owner or an interested party has right to file the revocation.

IS PARTIAL REVOCATION/CANCELLATION POSSIBLE? IF SO, IN WHAT CIRCUMSTANCES?

A revocation can be filed against part of the goods/services registered.

IS AMENDMENT POSSIBLE IN REVOCATION/CANCELLATION PROCEEDINGS? IF SO, IN WHAT CIRCUMSTANCES?

After a mark is registered, it is not allowed to be amended. Thus, if a mark is under revocation/cancellation proceeding, it is not possible to amend the mark. But the applicant/registrant has right to delete some items of goods/services.

ARE ACTIONS INVOLVING REVOCATION/CANCELLATION AND INFRINGEMENT HEARD TOGETHER? IF NOT, IS THERE ANY DIFFERENCE IN TIMING BETWEEN DECISIONS IN THE INFRINGEMENT AND REVOCATION CASES?

Usually, revocation/cancellation is examined case by case. For revocation with the same nature (the same application, same registrant of the disputed mark, same supporting evidence) and filed at the same time, it is possible to request the examiner to examine them in a lump. But decisions are still made case by case.

Revocation/cancellation and infringement are not heard together. The Court for infringement has discretion to determine whether the Court will wait for the decision on revocation/cancellation.

TRIAL & SETTLEMENT

ARE THERE SPECIAL PROCEDURAL PROVISIONS FOR TRADE MARK PROCEEDINGS? IF SO, PLEASE DESCRIBE THEM.

There isn't any special provisions for lawsuits in trademark proceedings that differ from non-intellectual property proceedings. The trademark infringement litigations are handled in accordance with the Civil Procedure Law of the PRC.

IS THE CASE DETERMINED BY LEGAL AND/OR TECHNICAL JUDGES OR BY A JURY? DO THE PARTIES HAVE AN INFLUENCE ON WHO IS THE DECISION MAKER?

The case is determined by a collegial bench. When a people's court tries a first instance civil case, a collegial bench consisting of judges and jurors or consisting of judges only shall be formed. The members of a collegial bench must be in an odd number. Civil cases tried under summary procedure shall be tried by a sole judge.

Generally speaking, the parties do not have any influence on who is the decision maker. However, under certain circumstances, the parties could request disqualification of the judge, court clerk, interpreters, identification or evaluation expert, and surveyor verbally or in writing.

WHAT POSSIBILITIES DOES THE DEFENDANT HAVE TO SETTLE THE CASE, AND WHEN DO THEY PRESENT THEMSELVES? ARE THERE FORMAL MECHANISMS FOR SETTLING THE CASE (E.G. MANDATORY SETTLEMENT CONFERENCES, COURT MEDIATION, ETC.)?

The defendant could file an application for mediation and both sides of a civil action may reach a settlement themselves.

When a people's court conducts mediation, mediation may be conducted by one judge or by the collegial bench, and mediation shall be conducted on the spot as much as possible. When a mediation agreement is reached, the people's court shall prepare a consent judgment. A consent judgment shall state the claims, facts of the case and results of mediation. The judges and court clerk shall affix their signatures and the people's court shall affix its seal to a consent judgment, which shall be served on both sides. Once a consent judgment is signed by both sides, it shall become legally binding.

DO OTHER COURT PROCEEDINGS, SUCH AS PARALLEL REVOCATION/INFRINGEMENT PROCEEDINGS, HAVE AN INFLUENCE ON THE CURRENT PROCEEDINGS (E.G. CAN AN INFRINGEMENT CASE BE STAYED PENDING RESOLUTION OF A VALIDITY ATTACK IN ANOTHER FORUM)? IF SO, HOW DO THEY INFLUENCE THE OTHER ONE?

It depends. According to the law, if the current cases shall depend on the results of the trial of another case which has not been concluded, the current cases shall be suspended.

In the meantime, the collegial bench of the current proceeding has the right to decided whether to suspend the current case to wait for the result of another proceeding.

REMEDIES

WHAT REMEDIES EXIST FOR THE TRADE MARK OWNER (E.G. DAMAGES,INCLUDING ENHANCED DAMAGES FOR WILFUL INFRINGEMENT), RECOVERY OF ATTORNEYS' FEES, INJUNCTIVE RELIEF, AN ACCOUNT OF PROFITS, PUBLICITY NOTICES, FROZEN OF BANK ACCOUNTS, ETC.)? DOES THE JUDGE HAVE DISCRETION IN ORDERING REMEDIES?

The court could rule that the infringer bears civil liabilities including stopping the infringement, eliminating negative influence, compensating for the losses, etc. The amount of damages for trademark infringement shall be determined according to the actual losses suffered by the trademark proprietor. When it is difficult to determine the actual losses, the amount of damages may be determined according to the profits acquired by the infringer. When it is difficult to determine the trademark proprietor's losses or the profits acquired by the infringer, the amount of damages may be a reasonable multiple of the royalties. When it is difficult to determine the actual losses of the trademark proprietor, the profits acquired by the infringer, or the royalties of the registered trademark, a people's court may award damages of no more than RMB3,000,000 (RMB three million) according to the circumstances of the infringement.

The collegial bench has discretion in ordering the remedies.

WHAT ARE THE RIGHTS OF / REMEDIES FOR A PREVAILING DEFENDANT (E.G. REIMBURSEMENT OF ATTORNEYS' FEES, DECLARATION FOR NON-INFRINGEMENT)?

Generally speaking, if a defendant prevails in the trademark infringement case, the court will declare that the defendant does not constitute trademark infringement. If the defendant would like to request for compensation from the plaintiff, the defendant shall file a counterclaim or initiate new litigation for compensation.

ARE THERE DIFFERENT TYPES OF REMEDIES FOR DIFFERENT TYPES OF TRADE MARKS? IF SO, PLEASE DESCRIBE THEM.

No.

APPEAL

ARE THERE SPECIAL PROVISIONS CONCERNING THE APPELLATE PROCEDURE FOR TRADE MARK PROCEEDINGS?

The appellate procedure of trademark proceeding is generally the same as the appellate procedure for other civil proceedings.

If any party is not satisfied with the judgement of the first instance, it shall have the right to file an appeal with the people's court at the next higher level within 15 days from the date of service of the written judgment. The original trial people's court shall, within five days after receiving a written appeal, serve the copies of the written appeal on the opposing parties, and the opposing parties shall, within 15 days after receiving the copies, submit their written statements of defence. The original trial people's court shall, within five days after receiving the written statements of defence, serve the copies of the written statements of defence on the appellant. After receiving both the written appeal and the written statements of defence, the original trial people's court shall, within five days, transfer them along with the entire case file and evidence to the people's court of second instance.

Specifically, does the appeal imply a full review of the facts of the case, or is it limited to a legal, rather than factual review only?

The people's court of second instance shall try a case around the party's claims in appeal. Where a party does not file claims, the people's court shall not try the case, unless the first-instance judgment violates prohibitive provisions in laws or damages the interests of the state, public interests, or the legitimate rights and interests of other persons.

COSTS

WHAT COSTS TYPICALLY ARISE BEFORE FILING A LAWSUIT? (E.G. FOR WARNING LETTERS, PROTECTIVE BRIEFS, EVIDENCE NOTARIZATION, ETC.)?

The costs for investigations into the possible defendant as well as the costs for evidence collecting, especial for the notarized preservation of the relevant evidences are the costs typically arise before a lawsuit.

WHAT ARE THE TYPICAL COSTS FOR BRINGING AN INFRINGEMENT ACTION TO CONCLUSION IN THE FIRST INSTANCE?

The typical costs include investigations fees, notarization fees, translations fees paid to the qualified translation firm (if documents in foreign languages are involved), attorney fees and expenses, court fees.

PLEASE DESCRIBE WHO IS RESPONSIBLE FOR PAYING THE COSTS OF LITIGATION, SUCH AS COURT FEES, EXPENSES AND ATTORNEYS' FEES. IS THE LOSING PARTY REQUIRED TO REIMBURSE THE PREVAILING PARTY FOR ATTORNEYS' FEES, ETC.?

The plaintiff could request that the defendant shall bear the reasonable costs in the litigation. If plaintiff wins the case, the judge could request the defendant to bear certain amount of the reasonable costs including the attorneys' fees. It is at the judge's discretion to decide the amount of reimbursements based on the evidence submitted by the plaintiff.

ALTERNATIVE DISPUTE RESOLUTION

IS ALTERNATIVE DISPUTE RESOLUTION A COMMON WAY (OR EVEN COMPULSORY ELEMENT) OF SETTLING A TRADE MARK CASE? IF SO, WHAT KIND OF ADRS (E.G. ARBITRATION, MEDIATION, CONCILIATION, ETC.) IS THE MOST COMMON, FOR WHAT KIND OF ACTIONS AND HOW IS IT CONDUCTED?

Alternative dispute resolution is not a compulsory element of settling a trademark infringement case. In accordance with the Trademark Law of the PRC, when any dispute arises from any of infringements upon the right to exclusively use a registered trademark, the parties concerned shall resolve the dispute through negotiation; and if they are reluctant to resolve the dispute through negotiation or the negotiation fails, the trademark registrant or an interested party may institute an action in a people's court or request the administrative department for industry and commerce to handle the dispute.

For agreements concerning trademark matters, if it is agreed in the agreement that the disputes shall be handled through arbitration, then the trademark case could be resolved through arbitration.

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.

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