China's recently released Standards for Determining General Trademark Violations (the "Standards") consists of 35 articles, which provide for ten categories of violations of the order of trademark administration in detail, including:
- infringement by (not) using a registered trademark
- use of marks that are not allowed to be used as trademarks
- use of the words "well-known mark" in commercial activities
- failure of a trademark licensee to mark its name and origin of goods
- changing the name, address or other information of the registered trademark or the registrant on its own
- failure to fulfil the obligations of managing collective trademarks and certification trademarks, failure to fulfil the obligations of managing trademark printing, and
- malicious application for trademark registration and other infringements of the trademark.
The Standards came into force on January 1, 2022.
With respect to the unregistered marks, the Standards elaborates on what constitutes and how to determine: (1) ethnic discrimination, (2) deceptive misrepresentation, and (3) detrimental to socialist morals and mores, all of which respectively correspond to Article 10.1 (6), (7) & (8) of PRC Trademark Law.
The Standards further clarifies that the term "ethnic discrimination" in Article 10.1 (6) of the Trademark Law refers to the use of unregistered trademarks with text, graphics or other compositional elements that stigmatize, disparage or treat a particular ethnic group unequally.
Articles 8 and 9 of the Standards further refine the interpretation of Article 10.1 (7) of the Trademark Law.
- It is likely to mislead the public as to the quality, main raw material, function, use, weight, quantity and other characteristics of the goods or services.
- It is likely to mislead the public as to the origin of the goods or services.
- 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 and are likely to mislead the public.
Detrimental to socialist morals and mores
Articles 10 to 13 of the Standards provide some specific interpretations of Article 10.1 (8) of the Trademark Law ("Those detrimental to socialist morals or mores, or having other unhealthy influences" shall not be used as trademark). The experience of the public in everyday life, or the records of dictionaries and tools, or the general awareness of the public concerned, can be used as a basis for judging whether it is harmful to socialist morality or has other negative effects.
In addition, the Standards clearly states that tobacco products, including e-cigarettes, must obtain the registered mark in China. Otherwise, they shall not be manufactured or sold in China.
From Article 18 onwards, there are mainly concerns with the determination of the general violation of registered marks. Beyond these basic articles, foreign enterprises are advised to pay attention to the following situations in light of this new regulation.
In Article 20, the China National Intellectual Property Administration (CNIPA) states that any of the following circumstances shall be considered as a self-changing trademark registration matter if no recordal of change has been filed with the CNIPA:
- The name of the trademark registrant has changed.
- The address of the trademark registrant has changed or the actual address is inconsistent with the address recorded in the Registry.
- Matters other than the name and address of the trademark registrant have been changed.
Therefore, if there is a change in the name or address of the client, it is important to file an application of name/address change with CNIPA in a timely manner.
Furthermore, according to Article 23, using a trademark that has not been registered with the CNIPA, but marking as the word "registered trademark" or adding the registered symbol ("®"), would be considered to be impersonating a registered trademark. This also applies to those who have obtained a registered trademark abroad. That is to say, you are not allowed to mark a product that is manufactured or sold in China as a registered trademark even if you have obtained registration of the trademark abroad but not in China.