Trademark Review and Adjudication Standards

Trademark Review and Adjudication Standards

December 31, 2005

With the approval of the State Administration for Industry and Commerce, the Trademark Review and Adjudication Standards are hereby promulgated.

Part I:

Trademark Review Standards (I)
Trademark Review Standards (II)
Trademark Review Standards (III)
Trademark Review Standards (IV)
Trademark Review Standards (V)

Part II: Trademark Adjudication Standards

Instructions

For the purpose of further regulating and improving the trademark review and adjudication work, in accordance with the Trademark Law and the Implementation Regulations thereof issued in 2002, the Trademark Office and the Trademark Review and Adjudication Committee formulated the Trademark Review and Adjudication Standards on the basis of the Trademark Review Rules formulated by the Trademark Office in 1994 and the Trademark Review and Adjudication Benchmark (Tentative) formulated by the Trademark Review and Adjudication Committee in 2001 and in light of the past experience in trademark review and adjudication as well as foreign standards for trademark review and adjudication. These standards have been approved by the State Administration for Industry and Commerce and are hereby issued for implementation by all review personnel of the Trademark Office and the Trademark Review and Adjudication Committee in trademark review and adjudication of trademark cases.

Contents

I. Adjudication standards for copy, imitation or translation of well-know trademarks
II. Adjudication Standards for unauthorized registration of the trademark of the principal or the represented
III. Adjudication Standards for Infringement on Others' Prior Rights
IV.
V. Adjudication Standards for Obtaining Trademark Registration by Means of Cheating or by Other Improper Means
VI. Adjudication Standards for Cancellation of a Registered Trademark
VII. Adjudication Standards for Similar Goods or Services
VIII. Adjudication Standards for Marks that Acquire Distinctive Characteristics after Being Used

I. Adjudication standards for copy, imitation or translation of well-know trademarks
Article13 of the Trademark Law: If a trademark, for which an application for registration is filed, of the same or similar commodity is the copy, imitation or translation of a well-known trademark of others which has not been registered in China, and misleads the public and leads to possible damage to the interests of the registrant of that well-known trademark, it shall not be registered and shall be prohibited from use.
If a trademark, for which an application for registration is filed, of a different or dissimilar commodity is the copy, imitation or translation of a well-known trademark of others which has been registered in China, and misleads the public and leads to possible damage to the interests of the registrant of that well-known trademark, it shall not be registered and shall be prohibited from use.
Article14 of the Trademark Law: The following factors shall be taken into consideration in the determination of well-known trademarks:
A. how well is that trademark known by the relevant public;
B. the period during which that trademark has been in use;
C. the period, extent and geographic scope of any publicity of that trademark;
D. the record of protection of that trademark as a well-known trademark; and
E. other factors for which that trademark is well-known.
Article5 of the Implementing Regulations on Trademark Law: According to the provisions of the Trademark Law and the present Regulation, when a dispute arises in the process of trademark registration or trademark appraisal and a relevant party concerned believes that the trademark thereof constitutes a well-known one, he may then apply to the Trademark Office or Trademark Appraisal Committee for recognition of the fact and reject the trademark registration application that violates Article 13 of the Trademark Law or cancel the trademark registration that violates Article 13 of the Trademark Law. When filing the application, the party concerned shall provide proving materials to prove that the trademark thereof constitutes a well-known trademark.
The Trademark Office or Trademark Appraisal Committee shall, upon the request of the party concerned and on the basis of found facts, decide whether the trademark constitutes a well-known trademark according to the provisions of Article 14 of the Trademark Law.
1. Overview
The above provisions are made for the dual purposes of protecting well-known trademarks by forbidding the registration of trademarks that unfairly exploits the brand awareness and good reputation of registered well-known trademarks and hence may cause confusion in both the marketplace and public recognition and infringe on the rights and interests of the legitimate owner of such well-known trademarks on the one hand, and neutralizing the possible inequitable effects of the strict application of the registration principle.
Where cases of objection to a trademark or review of such objection, or cases involving disputes over trademarks should involve the copy, imitation or translation of well-known trademarks, such cases shall be tried on a case-by-case basis in accordance with the present standards.
2. Application conditions
(1) Item 1 of Article 13 of the Trademark Law is applicable under the following conditions:
A. the trademark is not registered in China but is already well-known before the date of application for the registration of the trademark in dispute;
B. the trademark in dispute constitutes copy, imitation or translation of the well-known trademark;
C. the service or products represented by the trademark in dispute are the same as or similar to those represented by the well-known trademark;
D. the registration or use of the trademark in dispute may easily give rise to confusion.
(2) Application of Item 2 of Article 13 of the Trademark Law is applicable shall be subject to the following conditions:
A. the trademark is registered in China and is already well-known before the date of application for the registration of the trademark in dispute;
B. the trademark in dispute constitutes copy, imitation or translation of the well-known trademark;
C. the services or products represented by the trademark in dispute are not the same as or highly similar to those represented by the well-known trademark;
D. the registration or use of the trademark in dispute may cause confusion in public recognition and thereby damage the rights and interests of the registrant of the well-known trademark.
3. Determination of a well-known trademark
(1) The term "well-known trademarks" refers to trademarks that are widely known to the relevant public and enjoy a reasonably high reputation in China.
The Term "relevant public" includes but is not limited to the following:
A. producer or provider of the products or services represented by the trademark;
B. consumer of the products or services represented by the trademark;
C. people involved in the sales of the products or services represented by the trademark.
(2) Determination of whether a trademark is well-known or not shall be made on a case-by-case basis in light of the following factors, which, however, shall not be deemed as the prerequisite for the constitution of a well-known trademark:
A. the extent of awareness of the trademark in the relevant public;
B. the length of time during which the trademark is used in a sustained way;
C. the time, intensity and geographic sphere of any promotion and publicity activities for the trademark;
D. records testifying that the trademark entitled to protection as a well-known trademark;
E. registration of the trademark;
F. other factors relevant to the fame of the trademark.
(3) The above reference factors applicable in the determination of a well-known trademark may be proven by the following materials:
A. such documents related to the products or services represented by the trademark as contracts, invoices, delivery orders, bank deposit receipts, import & export documents, etc;
B. documents on the sales areas, distribution of the sales network, sales channels and method of the products or services represented by the trademark;
C. advertisements through such media as radio, movie, television, newspaper, periodical, cyber, outdoors publicity media, etc, media reviews or other publicity materials involving the trademark;
D. documents proving the participation by the products or services represented by the trademark in the exhibitions or expositions;
E. documents on the time when the trademark is first used and the continuous use of the trademark;
F. materials proving the registration of the trademark in China, overseas and relevant regions;
G. relevant documents proving that the trademark has been determined and designated by competent administrative organs or judicial organs as a well-known trademark that is entitled to legal protection, as well as documents on the infringement or imitation of the trademark, if any;
H. assessment report of the intangible assets value of the trademark issued by a duly qualified assessment institution;
I. statistics released or publicized by credible authoritative institutions or industry associations on the sales volumes, profit payment, tax turnover and output value of the products or services represented by the trademark as well as the ranking and advertisement volume of such products or services;
J. awards or prizes received by the trademark;
K. other materials that may prove the good fame and standing of the trademark.
As a general rule, the above materials should be those available by the date when the application for the registration of the trademark in dispute is made;
(4) Materials to provide the fame and good standing of a trademark may also include those obtained overseas on the precondition that such overseas materials can adequately prove that the trademark is known to the relevant public in China.
The determination of a well-known trademark is not subject to the precondition that the applicant trademark be registered in China, or application for such registration is made in China or that the products or services represented by the trademark is actually produced, sold or provided in China. Publicity for the products or services represented by the trademark shall also be deemed as use of the trademark and materials relating to the publicity may also be used in determining whether the trademark is well-known.
Materials proving the continuous use of the trademark should clearly demonstrate the trademark, the service or product that the trademark represented as well as when and by whom the trademark is used.
(5) In the trial of cases where the trademark has been determined and designed as a well-known trademark by a competent administrative organ or judicial organ and the opposite party holds no objection to the status of the trademark as a well-known trademark, the court may recognize the well-known trademark as such. Where the opposite party holds objection to the claim that the trademark is a well-known one, the materials proving the status of the trademark as a well-known trademark shall be reviewed to determine whether the claim is valid.
4. Criteria for determining the copy, imitation or translation of the well-know trademarks
(1) Copy of a well-known trademark refers to the situation where the trademark in dispute is the same as a well-known trademark owned by another party.
(2) Imitation of a well-known trademark refers to the situation where the trademark in dispute involves imitation of a well-known trademark owned by another party, such as the reproduction of the eminent features or portions of the well-known trademark.
Eminent features or portions of a well-known trademark refer to the primary distinguishing features or portions of the well-known trademark, including special words or characters or the arrangement or typography thereof, the special graphs or figures and the display thereof as well as special color arrangement, etc.
(3) translation of a well-known trademark refers to the situation where the trademark in dispute is the rendering of the well-known trademark in a different language and the rendering corresponds with the well-known trademark, which is known to the relevant public or is in habitual use by the relevant public.
5. Determination of likelihood of confusion or deception
(1) Confusion and deception refers to the misidentification of the source of the products or services, which include the following:
A. consumers misidentify the products or services as produced or provided by the owner of the well-known trademark;
B. the consumer is led into believing that there exists certain kind of relation between the producer or provider of the products or services represented by the trademark in dispute and the owner of the well-known trademark, such as investment, licensing or cooperation.
(2) Determination of confusion or deception may be made on the basis of the likelihood of such confusion or deception and is not be subject to the actual occurrence of such confusion or deception.
(3) Determination of the likelihood of confusion or deception is made in light of the factors:
A. extent of similarity between the trademark in dispute and the cited trademark
B. originality of the cited trademark;
C. reputation of the cited trademark;
D. the extent of relevance between the products or services represented by the trademark in dispute and those represented by the cited trademark;
E. other factors that may cause confusion or deception.
6. Determination of protection scope of well-known trademarks
(1) The protection scope for well-known trademarks not registered in China shall be products or services which are the same as or similar to those represented by the well-known trademarks, in accordance with Item 1 of Article 13 of the Trademark Law.
(2) The protection scope for a well-known trademark registered in China shall cover, in addition to products or services which are the same as or similar to those represented by the well-known trademarks, products or services other than those represented by the well-known trademark, in accordance with Item 2 of Article 13 of the Trademark Law.
The extension of the protection scope for a well-known trademark to products that are not the same as or similar to those represented by the well-known trademark shall be subject to the precondition of likelihood of confusion or conception. The exact protection scope shall be determined on a case-by-case basis in light of the factors as listed in (3) herein.
7. Determination of interested parties
In accordance with Item 2 of Article 41 of the Trademark Law, aside from the owner of a well-known trademark, interested parties to the trademark may also apply to a trademark review board for the cancellation of the registration of a trademark alleged of infringement on the well-known trademark. The following entities are interested parties to a well-known trademark:
A. licensee of a well-known trademark
B. other entities that have competent evidence proving its interest in the case involving the well-known trademark.
The identification of an interested party shall be made on the basis of the qualifications available by the time of application for such identification. However, a party that comes to have interest in a case involving copy, imitation or translation of a well-known trademark during the trial of the case shall also be deemed as an interested party.
　　......