11 May 2022
To optimize the management of trademarks and the enforcement against trademark violations, the Chinese National Intellectual Property Administration (CNIPA) issued Standards for Judging General Trademark Violations. The Standards provide guidance for the trademark law enforcement authorities to unify their enforcement standards, and to offer brand owners transparent and predicable rules on trademark use and administration.
Composed of 35 articles, the Standards were adapted from various existing trademark laws in China, including 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. For example, Article 3 lists out 10 behaviours which are regarded as general trademark violations, such as using signs prohibited as trademarks in violation of Article 10 of the PRC Trademark Law; Article 7 explains what is the definition of signs “having the nature of discrimination against any nationality” in Article 10 (6) of the PRC Trademark Law.
Aimin Huo, a trademark attorney and deputy director of the legal division at CCPIT Patent and Trademark Law Office in Beijing, believes it is necessary to restate the trademark violations using the Standards despite having existing provisions in the related laws. “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.”
“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,” he said.
In addition to providing guidance to law enforcement officials, Huo suggested that the Standards can help trademark law practitioners in China to better advise the brand owners on trademark use as well, so that they can avoid the risks of committing general trademark violations and the accompanying 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.” He shared an example that the PRC Trademark Law provides that using a trademark which has not been registered with the CNIPA, but marking as "registered trademark" or adding the registered symbol, would be considered to be feigning a registered trademark. This is stated in Article 22 of the Standards.
Another example is that a foreign brand owner is not allowed to mark on a product imported into China for sales “registered trademark” or adding the registered symbol if they have not obtained the trademark registration in China, even if they have obtained the registration abroad. “According to Article 23 (7) of the Standards, such trademark use by the foreign brand owner is prohibited as general trademark violation unless the foreign brand owner has a disclaimer in this regard,” Huo said.
The Standards were issued on December 13, 2021, and has taken effect since January 1, 2022.
Ivy Choi
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