Standards for Judging General Trademark Violations in China published

To implement the decision and deployment of the CPC Central Committee and the State Council on strengthening the protection of IP rights, the CNIPA has issued the “Standards for Judging General Trademark Violations in China published”, short as the Standards to guide the enforcers of the departments. 

The draft version of the Standards for Judging General Trademark Violations (“Draft Standards”) was published on 17 August 2021 for public comments until 1 October the same year.

The official publication of the Standards was on December 13, 2021. The Standards takes effect from the beginning of 2022.

The formulation of “the Standards” is a practical need to implement the requirements of institutional reform. Not only that but the Standards also serves as a supporting pillar for the implementation of the “Opinions on Strengthening the Protection of IP Rights” and its promotion plan, as well as other initiatives by China’s government.

Built from the framework of the Trademark Law of China, as well as the guiding trademark enforcement regulations, the Standards is the guiding document that has the function of systematically sorting out and summarizing the experience and practices of trademark administrative protection over the years.

The law enforcement departments will use the Standards as an operational guideline to deal with IP-related matters with high transparency and predictability for rights holders. 

Key information in the Standards

Below are some of the key information in the Standards:

The general trademark violations

In the 35 articles of the Standards, there are about 10 categories of trademark violations, including: 

1. infringement by not using a registered trademark;
2. use of marks that are not allowed to be used as trademarks;
3. use of “well-known trademarks” in commercial activities;
4. the trademark licensee does not indicate the name and origin of goods;
5. The changes of the registered trademark, registrant’s name, address, or other registration matters in the using the registered trademark;
6. unregistered trademarks are used as registered trademarks;
7. failure to perform the collective trademark and proof of trademark management obligations;
8. failure to perform the trademark printing management obligations;
9. malicious application for trademark registration.

Unregistered marks

Although we have basically had a somewhat understanding of an unregistered trademark, however, now the Standards have explicitly had a definition of this term. Therefore, the IP enforcer and practitioner will now have a guideline on how to handle infringement cases involving unregistered marks.

Specifically, with respect to Article 10.1 (6), (7) & (8) of PRC Trademark Law, unregistered marks are constituted and determined by: 

(1) ethnic discrimination, 

(2) deceptive misrepresentation;

(3) detrimental to socialist morals and mores

Ethnic discrimination

According to Article 10.1 (6) of the Trademark Law, “ethnic discrimination” refers to the use of unregistered trademarks with text, graphics, or other compositional elements that stigmatize, disparage or treat a particular ethnic group unequally.

Deceptive misrepresentation

Deceptive misrepresentation is one of the more troublesome terms as it is hard to define, even now with the Standards as it is based on each unique case. 

However, in summarizing, the deceptive misrepresentation action takes place if:

1. The marks are likely to mislead the public as to the quality, main raw material, function, use, weight, quantity, and other characteristics of the goods or services.
2. The marks are likely to mislead the public as to the origin of the goods or services.
3. The marks are likely to mislead the public with other representations of the quality or other characteristics of the goods or services used, or of their origin, that exceed their inherent extent or are inconsistent with the facts.

Other adverse effects

A sign might be determined as having “other adverse effects” under the following situations:

1. Where it endangers national security and undermines national unity;
2. Where it is detrimental to the sovereign, dignity, or image of a state;
3. Where it damages public benefits or disrupts public order;
4. Where it is detrimental to the dignity or feelings of a nation or ethnicity;
5. Where it is detrimental to religious belief, religious feelings, or folk belief;
6. Where it or its constituent elements are the same as or similar to the names or portraits of public figures in the fields of politics, economy, culture, religion, ethnicity, etc., which cause adverse effects on the social public interests or public order;
7. Others may cause adverse effects on the social public interests or public order.

Standards for Judging General Trademark Violations in China published

The issuance of the Standards is helpful to understand how the CNIPA determines a trademark violation. Accordingly, the parties involved in a trademark infringing case will have a guidebook on using the correct provisions to turn the odds to their side. 

In addition, it is also incredibly helpful as with the Standards, trademark rights holders will have more courage, being motivated to take active actions against trademark infringements as they now have transparent and predicable rules on trademark use and administration.

Not just the ones being involved with a case, normal IP rights holders can also benefit from learning about how the CNIPA addresses and tackles IP issues and may create a sound plan to prepare for future potential IP battles. 

The Standards for Judging General Trademark Violations in China published is composed of 35 articles. 

To build up the Standards, experts have gathered and synthesized from various laws and regulations such as the PRC Trademark Law, Regulations on Trademark Printing Administration, Provisions on Regulating Trademark Filing and Registration, etc. 

The main content of the Standards consists of restatement or elaboration of the provisions in these laws that are related to general trademark violations that haven’t been clearly defined before. 

Most important changes have been mentioned above, such as with the behaviors that are considered general trademark violations in Article 3, or the action of using signs prohibited as trademarks in violation of Article 10 of the PRC Trademark Law, the explanation of signs “having the nature of discrimination against any nationality” mentioned in Article 7, correcting and supplementing Article 10 (6) of the PRC Trademark Law.

Expert opinions

Aimin Huo, a trademark attorney and deputy director of the legal division at CCPIT Patent and Trademark Law Office in Beijing, shares his enthusiastic viewpoint on the issuing of the Standards, stating that he believed it is necessary to restate the trademark violations using the Standards despite having existing provisions in the related laws as the previous law has definitions that were not fully elaborated: “Firstly, it can be complex to determine general trademark violations, and professional expertise is required in determining general trademark violations. Secondly, the provisions in the PRC Trademark Law and other laws related to the general trademark violations are broad in text, and the trademark law enforcement officials working on the field need more specific guidance to solve novel and complex problems.”

Recognizing the loophole in the current law is a major leap forward, however, addressing and taking necessary actions to tackle the problems is an even greater step made by the government. On this matter, he added: “Compared with the related trademark laws and regulations, the Standards are more specific and practical in terms of helping the trademark law enforcement authorities in interpreting the provisions on the general trademark violations, and applying the laws and regulations in concrete cases.”

As the general population won’t directly research the Standards, it is necessary for law enforcement officials to explain in detail to the rights holders how they can protect their rights, based on the Standards. For example, Huo suggested that trademark law practitioners in China can give out better advice to brand owners on trademark use so that they can avoid the risks of committing general trademark violations and the coincidental penalties: “With the Standards in mind, the business owners and trademark owners can take precautionary steps to avoid any trademark use that might constitute general trademark violations.” 

The relevant officer in charge of the Protection Department of the CNIPA also shared their positive view on the Standards’ publication. 

They stated that the next step would be to do a good job in the policy interpretation of the Standards, increase training and promote the implementation of the Standards.

In addition, guiding cases should also be made public to further understand the regulations of the Standards to constantly improve the guiding system, improve the protection level of law enforcement, increase the protection of IP rights, and create a creative and friendly, transparent business environment.

***Other Articles***

– You could see How To Register Trademark in China here.

– You could visit here to see Procedure of Trademark in China.

– You could visit here to check Required documents of filing trademark in China.

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