China Issues Stricter Trademark Use Regulations

The Standards for Judging General Trademark Violations released by the China National Intellectual Property Administration (CNIPA) took effect on January 1, 2022.

The standards establish concrete parameters for determining trademark infringement, imposing more burdensome trademark requirements, increasing trademark enforcement and protection, and harmonizing trademark usage with administration standards and norms.

About trademark use, the standards specify nine categories of generally prohibited activities, including:

1. Failure to utilize a registered trademark as necessary ( true for tobacco and pharmaceutical items);

2. Use of a mark that cannot be used as a trademark (e.g., marks identical to or similar to a country's name, national flag, national emblem, or military flag; marks that discriminate against any nationality; marks that exaggerate and deceive in advertising goods; and so on);

3. In commercial activities, the phrase "well-known trademark" must be used;

4. Failure to state the name of the licensee and the origin of the goods;

5. Changing the registrant's name, address, or other registered items;

6. Using unregistered trademarks as registered;

7. Non-compliance with administrative requirements relating to collective or certification marks;

8. Failure to meet trademark printing administration obligations; and

9. Falsely filing and registering trademark applications.

The standards list goes onto the criteria that can be used to determine whether or not a trademark has been infringed upon:

Misuse of the ? symbol

Even if a trademark is registered in another jurisdiction, the registration symbol ? or the phrase "registered trademark" may not be utilized if it is not registered in China.

What is the impact of this new standard in practice??

If the mark is not registered in China, exporting products to China with the ? symbol or the words "registered trademark" (since the mark is registered outside of China) would be regarded as illegal. Before sending any goods to China, check the packaging for the ? symbol or the word "registered trademark" and take steps to remove the logo or word before exporting goods. If China is a significant market, the TM symbol can be used until a Chinese registration is issued. Indeed, before sending goods to China, one should definitely consider filing a trademark application.

On-time filing

Any change to a registrant's name, address, or other information must be reported to the China National Intellectual Property Administration(CNIPA) as soon as possible.

Controlling the use of the licensee's trademark

Suppose a licensee violates the restrictions for using a registered trademark. In that case, the registered owner may be held accountable if he/she was aware of the misuse. The registrant has an affirmative obligation to keep an eye on the licensee & intervene as soon as possible in case of any misbehavior.

It might be a good idea to look at how you utilize trademarks in China to make sure you comply with the country's new trademark regulations.

Notice: This blog and the information provided within it does not constitute legal advice. The information on this blog is for general reference purposes only. Your access to, use of, or reliance upon this blog or its materials does not create an attorney-client relationship. You should always consult with an attorney for specific legal advice regarding your individual situation.