CHINA Law and Practice Contributed by: Chuanhong Long, Huiqing Wang, Yingying Shen and Fan Li, CCPIT Patent and Trademark Law Office
Genuine use Genuine use refers to the effective, commercial and true use of the trade mark in commerce. Specifically, the use of the trade mark shall meet the following requirements: • it can show the registered trade mark; • it can show that the trade mark is used on the des- ignated goods or services; • it can show the user of the trade mark (including the trade mark registrant itself, the person author- ised by the registrant, etc); • it can show the use date (within three years before the date of the cancellation application); and • it can prove the use within the territory covered by the effect of the Trademark Law. Consequences of Non-Use If a registered trade mark is not used for three con- secutive years without justifiable reasons, any unit or individual may apply to the CNIPA for cancellation of the registered trade mark. If the trade mark registrant fails to provide evidence of the use of the trade mark within the specified time limit, or the evidence pro- vided is invalid and there is no justifiable reason, the CNIPA shall cancel its registered trade mark. If the evi- dence provided by the trade mark registrant can only prove that it has used the registered trade mark on some of the approved goods, the registration on those goods and the goods similar to those goods may be maintained, and the registration on other goods shall be cancelled. 2.5 Trade Mark Rights and Limitations Exclusive Rights Conferred Registration confers the following exclusive rights: • right to exclusive use on approved goods/services; • right to prohibit others from using identical or similar marks on identical or similar goods without authorisation; • right to license others to use the mark; • right to assign or pledge the trade mark; and • right to seek remedies for infringement. Limitations and Defences Limitations and defences include:
the source of goods or services are the essential ele- ments. Acquired Distinctiveness/Secondary Meaning Acquired distinctiveness or secondary meaning can be established through long-term use, extensive pro- motion, market share, and recognition by the relevant public to indicate commercial origin. Famous/Well-Known Marks Well-known trade marks are protected regardless of registration. Unregistered well-known marks are protected on identical/similar goods; registered well- known marks are entitled to cross-class protection. 2.3 Trade Mark Registration System Registration Requirement Exclusive trade mark rights are acquired by registra- tion. Unregistered trade marks enjoy only limited pro- tection. Procedures, Timelines and Costs Trade mark applications should be filed with the China National Intellectual Property Administration (CNIPA). It is normal and necessary to conduct a search for prior-filed or registered trade marks. The examination period is very short, and it is decreasing. The official fee for filing an application for one trade mark in one class (within ten items of goods/services) is CNY270. If the number of items exceeds ten, there will be a CNY27 charge for each item over ten. Multi-Class Applications Multi-class applications are permitted under Chinese Trademark Law, with no statutory restriction on filing. 2.4 Term, Use and Maintenance Term of Protection A registered trade mark is valid for ten years from the date of registration. Renewal Renewal may be filed within 12 months before expira- tion; a six-month grace period is available with a sur- charge. Each renewal extends the term by ten years.
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