Chinese IP News, May 2022

By Ms. Haoyu Feng, Lawyer and Partner of Chofn IP

1: Registration of works to be processed online 

According to the Copyright Protection Center of China (CPCC), to cope with the covid pandemic and promote the high-quality development of the copyright registration, the CPCC shall process registration of works online as from 10 May 2022 and the application materials need not to be submitted or mailed in hard copy to the CPCC.

2: Preliminary evidence of investigation is required for non-use cancellation of registered trademarks

According to the newly revised Trademark Examination Guidelines effective as from 1 January 2022 and the China National IP Administration’s (CNIPA) recent official documents, the application documents for trademark non-use cancellation shall indicate the specific reasons for cancellation, including the preliminary evidence of investigation, otherwise, the CNIPA may require the party to make supplementation or refuse the application. The extra burden of proof might help prevent the abuse of the non-use cancellation.

3: CNIPA releases the Guides for the Registration and Use of Trademarks for the Catering Industry

On 26 April 2022, the World Intellectual Property Day, the CNIPA released the Guides for the Registration and Use of Trademarks for the Catering Industry (Trial), including the aims, scope of application, likelihood of confusion in the industry, indistinctive signs, and reasonable use. This is the first time that the CNIPA releases trademark guides for a specific industry. The CNIPA has not indicated whether it will make similar guides for other industries. We suggest that the competitors in the industry immediately study the specific guides to take advantage of the situation.

4: SAFEGUARD recognized well-known trademark and granted cross-class protection

The Beijing High People’s Court recently rejected the appeal of the owner of the trademark “舒服佳” (very similar to SAFEGUARD in Chinese), No. 8689072 in class 24 based on P&G’s earlier well-known trademark “舒肤佳 (SAFEGUARD in Chinese)”, No. 713558 in class 3, and thus, sustained the first-instance ruling and the CNIPA’s invalidation decision of recognizing P&G’s trademark well-known and granting cross-class protection.

This is a typical case where a well-known trademark was granted cross-class protection against a trademark registered for more than 5 years, an exception of the 5-year period for invalidation cases based on relative grounds, which also requires bad faith of the owner of the trademark to be invalidated. In this case, the owner once applied for the same trademark “舒肤佳 (SAFEGUARD in Chinese)” and thus its bad faith was affirmed.