On December 13, 2021, the Chinese National Intellectual Property Administration (“CNIPA”) has issued the “Judgement Standards for General Trademark Violations” (“Standards”) effective from January 1 20221. The Standards uniforms judgment standards, strengthens trademark management, unified law enforcement standards, and enhances the enforcement of law.

The Standards is based the “Trademark Law of the People's Republic of China” (“Trademark Law”), “Implementation Regulations of the Trademark Law of the People's Republic of China” (“Implementation Regulations”), as well diverse and complex trademark violations from the development of the Internet economy in the recent years. Overall, the Standards not only establishes a unified blueprint for relevant administrative enforcement departments when determining trademark infringement, but also fosters a transparent and standardised trademark management system for the market players. 

Trademark Infringement

The Trademark Law and the Implementation Regulations defines two categories of trademark violations.

  • Infringing the trademark rights of the designated trademark proprietor, known also as “trademark infringement", or
  • Acts that do not constitute as trademark infringement but violated the trademark order and harms public interests, called also “general violations”

Considering the above definitions, “general trademark violations” refers to violations of the trademark order.

General trademark violations

1. Mandatory goods

Failure to use registered trademark for mandatory goods - Article 6 of the Trademark Law:

Article 4 of the Implementation regulations provides:” With respect to goods requiring the use of a registered trademark according to the laws and administrative laws and regulations, an application for trademark registration shall be filed; the goods may not be sold on the market before the registration thereof is approved”.

According to current Chinese laws and regulations, only production or sales of tobacco products are required to use a trademark registered in China.

Article 4 of the Standards, "For selling of imported cigarettes, cigars, packaged cut tobacco, electronic cigarettes and other new tobacco products in China, trademark registered in China must be used. Those that have not trademark registered in China may not be produced or sold in China."

2. Forbidden signs

Utilising forbidden signs on trademarks - Article 10 of the Trademark Law:

Article 10 of the Trademark Laws stipulates that signs identical with or similar to the State name, national flag, national emblem of the People's Republic of China or other foreign countries shall not be used as trademarks. For signs identical with or similar to State name, national flag, national emblem of foreign countries, if the trademark is already approved for registration by government of the country, then it shall be also registrable in China. Although, the trademark registration in the foreign country shall be presented in trademark registration application in China.

Equally, signs “of discrimination against any race”, “of fraud”, “detrimental to socialist morals or customs, or having other unhealthy influences” are forbidden as according to. paragraph 6, 7 and 8 of the Article 10 of the Trademark Law. In practice, such provisions could be misinterpreted since the definition could vary from individual to individual depending on their background, nationality, culture and so forth. As a result, enterprises and individuals should seek legal opinion to gain a reasonable analysis and probability of the trademark's registrability before the trademark application.  

3. Well-known trademark

Forbidden to utilise “Well-known trademark” slogans - Article 15, paragraph 5 of the Trademark Law:

Article 14, paragraph 5 of the Trademark Law provides that “Producers and operators shall neither use characters such as "Well-known Trademark" in the goods, on the packaging or vessels or apply the same for advertising, exhibition or other commercial activities.”

Generally, the court in trademark litigations interprets “Well-known Trademark” a “passive recognition” to protect the disputed trademark. Therefore, applicants shall not use “Well-known Trademark” as promotional slogans.

4. Products name and place of origin

Failure to indicate the products name and place of origin of the licensee - Article 43, paragraph 2 of the Trademark Law:

“The party authorized to use others' registered trademark shall indicate the name of the licensee and the place of origin on the goods that bear the registered trademark.”

5. Alterations

Trademark registrant shall not, at his/her discretion, alter the registered trademark, name or address of the registrant or other information during use of the registered trademark - Article 49, paragraph 1 of the Trademark Law:

Article 49, paragraph 1 of the Trademark Law states: “Where a trademark registrant, at his/her discretion, alters the registered trademark, name or address of the registrant or other information during use of the registered trademark, the local administrative department for industry and commerce shall order such registrant to rectify the same. Where no rectification has been made upon expiration of the prescribed period, the Trademark Office shall revoke the registered trademark in question.”

Any changes to trademark's owner's title or address shall be promptly notified to the CNIPA by submitting the application of change a name or address. If the trademark shall be modified for any business demand, then a new application for the new trademark registration shall be filed.

6. False registered trademarks

Utilising unregistered trademark as registered trademarks- Article 52 of the Trademark Law:

Article 52 of the Trademark Law provides: “If the unregistered trademark is falsely represented as a registered one, or use of an unregistered trademark is in violation of Article 10 hereof, the local administrative department for industry and commerce shall stop such use, order rectification of the situation within a specified period, and may circulate a notice; in the event of illegal business revenue of over CNY50,000, a fine up to 20% of such revenue may be imposed; in the event of no illegal business revenue or business revenue of less than CNY50,000, a fine up to CNY10,000 may be imposed.”

Although, most goods and services do not require a registered trademark and unregistered trademarks can be used (except mandatory goods and services), trademarks that infringe upon prior any trademark rights and falsely represents another registered trademark is illegal.

7. Management obligation of collective trademarks

Failure to fulfill management obligations of collective trademarks, certification marks in violation of the Article 4, paragraph 2 of the Implementation Regulations and Article 14, 15, 17, 18, 20 and 21 of the “Management Rules of registration of Collective trademarks and Certification marks” (hereinafter referred as to “Management Rules”):

Article 4, paragraph 2 of the Implementation regulations provides: “Where a geographical indicator is registered as a certification mark, the natural person, legal person or other organization whose commodities meet the conditions for use of the said geographical indicator may request authorization to use the certification mark, and the organization that controls the certification mark in question shall consent. In the event that a geographical indicator is registered as a collective mark, the natural person, legal person or other organization whose commodities meet the conditions for use of the said geographical indicator may request authorization to become a member of the body, society or other organization that has registered the geographical indicator as a collective mark, and the body, society or other organization shall accept them to be a member, according to its articles of association. A party who has not requested authorization to become a member of the body, society or other organization that has registered a geographical indicator as a collective mark, may also have justification to use the said geographical indicator, shall not be forbidden to do so by the relevant body, society or other organization.”

Failure to effectively manage or control the trademark are deemed as the following and according to the Article 21 of the Management Rules:

  • Violating members of the collective trademark management rules do not assume responsibility
  • Ineffective inspection and supervision system adopted by the collective trademark is not in effective operate;
  • Other failures to effectively manage or control the trademark.

8. Trademark printing management

Failure to fulfill the trademark printing management obligations - Articles 7 to 10 of the "Trademark Printing and Production Management Regulations":

Trademark printing refers to printing or making trademark representations. "Trademark Printing and Production Management Regulations" stipulate those enterprises and individual business engaged in the printing and production of trademark shall obtain a "Trademark Printing Certificate", and the certificate is inspected every two years. If the inspection finds an expired certificate, the company shall be subject either of the following: conduct a postponed correction by the local Administration of Industry and Commerce, subject to warning or penalty according to the actual situation.

9. Malicious application

Malicious application of trademark registrations in violation - Article 3 of the “Provisions on standardizing trademark application of registration” (hereinafter referred as to “Provisions”)

The “Provisions” stipulates that trademark registration application shall follow the principle of good faith, and the following situations shall not occur:

  • Malicious trademark application filed not with the purpose of use
  • Copying, imitating or translating well-known trademarks
  • Agents or representatives applying for the registration of the principal's trademark without authorisation. Trademark application filed knowing another person's prior trademark rights through contract or business relationships with the latter.
  • Filing trademark registration applications that may damage the existing prior rights of others or anticipate, by improper means, other's trademark applications which has already acquired certain influence.
  • Filing trademark applications by fraud or other improper means.
  • Other violations of the principle of honesty and credit, public order and good customs, or other acts with harmful effects.

For companies launching in the China market, we recommend all the applicants of trademarks to exercise due diligence when working with agents, partners especially prior to the trademark is registered. Equally, proper preservation of correspondence, communications records with the third parties are crucial evidence for trademark disruptions.

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.