Authors: Zhou Xiaoli, Shen Jinjie, Intellectual Property group, King & Wood Mallesons
On August 17, 2021, the China National Intellectual Property Administration (CNIPA) issued “Judgement Standard for General Trademark Violations (Draft for Public Comments)” (hereinafter referred to as the “Standard”) and made it available for public comments. The Standard, which mainly bases on the Trademark Law and the Regulation on the Implementation of the Trademark Law, aims to strengthen operational guidance on trademark enforcement, unify enforcement standards and optimize the innovation environment and business environment. Any comments for the Draft shall be submitted to the CNIPA before October 1, 2021.
The Standard provides detailed provisions on the definition, specific circumstances and legal consequences of various types of general trademark violations, mainly involving failure to use a registered trademark where it is required to do so，the use of marks which may not be used as trademarks, the use of the words “well-known trademark” in commercial activities, failure of a trademark licensee to mark his name and the origin of goods, changes to registered trademarks and related information without approval, the use of unregistered trademarks as registered trademarks, failure to perform duties to manage collective trademarks and certification trademarks, failure to perform trademark printing management duties and applications for trademark registration in violation of the principle of good faith.
The following may be of particular interest:
- Signs that may not be used as trademarks
The Standard refines the criteria for the prohibition of use as a trademark, defines other adverse effects and provides for the determination of when a trademark has multiple meanings.
The Standard provides that in determining whether an unregistered trademark is “a sign that may not be used as a trademark” as stipulated in Article 10 (1) of the Trademark Law, the general awareness of the public in China shall be used as the standard of judgement, while taking into account the reasonable opinions of the specific public in China. In addition, the Standard specifies that “having any other adverse effect” as stipulated in Article 10 (1) (8) of the Trademark Law means that the words, graphics or other constituent elements of the sign have a derogatory meaning, or the mark itself has no derogatory meaning but its use as a trademark is likely to have a negative or adverse impact on China’s political, economic, cultural, religious, ethnic and other social public interests and public order. Finally, the Standard provides that if an unregistered mark is used with multiple meanings, it may be found to be in violation of Article 10(1) of the Trademark Law if one of the meanings is likely to cause the public to believe that it is a sign “bearing ethnic discrimination, deceptive, or having any other adverse effect “.
- Using an unregistered trademark as a registered one
The Standard provides for specific cases of using an unregistered trademark as a registered one and clarifies the trademark registrant’s obligation to supervise the licensee.
The Standard provides that the specific cases of “using an unregistered trademark as a registered one” includes the use of the trademark beyond the goods or services approved for use with “registered trademark” or the registration mark, the marking of “registered trademark” or the registration mark after changing the distinctive features of the registered trademark, the use of two or more registered trademarks in combination but not marked with registration marks one by one, and the marking of trademarks on imported goods that are not registered in China and not explicitly declared. At the same time, the Standard clarifies the trademark registrant’s obligation to supervise the licensee. To be specific, the trademark registrant shall supervise the licensee’s lawful use of its registered trademark, and the trademark registrant shall bear the corresponding legal responsibility if he knows or should know that the licensee is impersonating a registered trademark and fails to stop it in time.
- Trademark signs and trademark printing
The Standard provides a definition of trademark signs and trademark printing, and clarifies the obligation to verify the printing of registered and unregistered marks.
The Standard provides that a “trademark sign” is a tangible carrier with a trademark that enters circulation together with the goods. The “trademark sign” includes both registered and unregistered trademark signs and are generally independent of the goods being marked and do not have the function of those goods. “Trademark printing” refers to the act of printing and producing trademark signs. Marking trademark graphics directly on goods, parts of goods, and main raw materials of goods by printing, stamping, etc., belongs to the act of production and processing of goods, and is generally not a trademark-printing act. In addition, the Standard also clarifies the verification obligations of trademark printing and production entities, whether they undertake to print registered trademarks or unregistered trademarks, they should fulfil their verification obligations in accordance with the corresponding provisions. To be specific, when printing and producing registered trademarks, the entity should verify that the certification documents such as the Trademark Registration Certificate and the trademark to be printed are consistent with the trademark approved for registration in the Trademark Registration Certificate. When printing unregistered trademarks, the entity should check the certification documents, the trademark pattern and the existence of prior registered trademarks that are identical to the trademark sign.