By Ms. Haiyu Li and Mr. Tingxi Huo, Chofn IP
On 13 December 2021, the China National Intellectual Property Administration (CNIPA) issued the Criteria for Determining General Illegal Trademark Acts to strengthen trademark administration, unify the enforcing criteria, and improve enforcement. The Criteria, composed of 35 rules, more clearly define some important statutory concepts and specify the scenarios of illegal acts with highlights below:
- General illegal trademark acts
The Criteria list the 10 types of general illegal acts relating to trademarks:
- Failure to use a registered trademark where it is necessary (applicable to tobacco products and pesticides only);
- Use of a forbidden sign as a trademark against Article 10;
- Use of the terms WELL KNOWN MARKS in Chinese;
- A licensee’s failure to indicate its name or the location of production;
- Unilateral change of a registered trademark, the registrant’s name, address or other registered items;
- False representation of registration;
- Failure to fulfil the administrative obligations relating to collective or certification marks;
- Failure to fulfil the administrative obligations of trademark printing;
- Filing trademark applications in bad faith; and
- Other acts violating the trademark administrative order.
- Trademarks against Article 10 shall not be used
Foreign entities should pay special attention to Rule 15, under which a trademark that is eventually rejected, cancelled or invalidated according to Article 10 of the Trademark Law shall not be used as a trademark any more, to avoid investigation and penalty.
In addition, according to Rule 14, where an unregistered trademark in use has multiple meanings and one of the meanings is probable to make the public believe that it belongs to the scenarios prescribed in Article 10.1.6-10.1.8 of the Trademark Law, an illegal act may be affirmed.
- Misuse of registration symbol is strictly forbidden
Under Rule 23, where a foreign party uses a trademark not registered in China, it shall not use the registration symbol ® or other symbols or terms meaning registered trademarks. When a mark is registered in a foreign country but not China, it would be safer to have the registration symbol deleted before the goods enter the Chinese territory.
- Change of registered items shall be timely recorded
Under Rules 18, 20 and 21, if there is change of any of the registered items such as the name, address or other items, the registrant is supposed to timely file request with the CNIPA for recording the change. If a used mark is labeled with REGISTERED TRADEMARK or registration symbol, the registrant shall not unilaterally change the trademark specimen with the perception and recognition of the registered trademark influenced. The local authorities concerned may also order the relevant party to make rectification within a prescribed period or report to the CNIPA, that may cancel the registration.
- Registrant shall supervise licensee’s use
Under Rule 24, a registrant shall supervise the licensees’ lawful use of the registered trademark. If there is any unlawful use (e.g., unilateral change of registered information), the registrant has the obligation to timely stop the use or shall bear the legal liability.
It is highly advisable for all trademark users, owners and professionals to immediately study the Criteria, which will come into effect on 1 January 2022. Although the relevant authorities do not have sufficient resources to timely monitor each and every illegal act and fully enforce the Criteria, competitors might enthusiastically report breaches.
We have translated the entire Notification and Criteria into English for our colleagues’ easy information and use. If you need the translation, please feel free to contact us at mail@chofn.cn.
