On January 1, 2022, the China National Intellectual Property Administration’s (CNIPA) newly-issued Standards for Judging General Trademark Violations (Standards) took effect.
The Standards implement concrete guidelines for judging trademark violations as well as impose stricter requirements on trademarks, strengthen the enforcement and protection of trademarks, and unify standards and rules on trademark use and administration.
The Standards identify nine categories of general unlawful acts in relation to trademark use, including:
1. Failure to use a registered trademark as required (specifically applicable to tobacco products and pharmaceuticals); 2. Use of a mark that cannot be used as a trademark (e.g., marks identical, or similar, to a nation’s name, national flag, national emblem, or military flag; marks having the nature of discrimination against any nationality; marks having the nature of exaggeration and fraud in advertising goods; etc.); 3. Use of the phrase “well-known trademark” in commercial activities; 4. Failure to indicate a licensee’s name and the origin of the goods; 5. Altering the registered trademark, the registrant’s name, address, or other registered items; 6. Using unregistered trademarks as registered trademarks; 7. Failure to fulfill the administrative obligations relating to collective or certification marks; 8. Failure to fulfill the administration obligations of trademark printing; and 9. Filing and registering trademark applications in bad faith.
The Standards further detail applicable criteria for determining trademark violations:
Misuse of ® If a trademark is not registered in China, the registration symbol ® or the word “registered trademark” may not be used even if the trademark is registered in another jurisdiction.
What is the practical effect of this new standard? Exporting goods to China which bear a mark with the ® symbol or the word “registered trademark” (because the mark is registered outside of China) would be considered an illegal act if the mark is not registered in China. It’s important to examine packaging for use of the ® symbol or the word “registered trademark” before any goods are sent to China and to take steps to remove the symbol or word before exporting goods. If China is an important market, the TM symbol can be used pending the issuance of a Chinese registration. Certainly, one should consider filing a trademark application in China well before goods are sent there.
Timely Filing Any change relating to a registrant’s name, address, or other information must be recorded in a timely fashion with the CNIPA.
Supervision of Licensee’s Trademark Use If a licensee is not following the rules regarding the use of a registered trademark, the owner of the registration could be liable if it knew, or should have known, about the misuse. The registrant has an affirmative obligation to monitor the licensee and timely stop any misuse.
Next Steps It may be the right time to review your use of trademarks in China to ensure compliance with China’s new trademark laws.