CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
1. Trade Mark and Copyright Law 1.1 Governing Law Trade marks are governed by the Chinese Trade - mark Law, and copyright is governed by the Chi - nese Copyright Law, which are both statutory laws. Common-law trade marks and copyright are not recognised. 1.2 Conventions and Treaties/Rights of Foreign IP Holders China is a signatory of the Madrid Agreement Concerning the International Registration of Marks, the Paris Convention for the Protection of Industrial Property, and the Convention Estab - lishing the World Intellectual Property Organiza - tion, but these are not self-executing. In addition, China is a signatory of the Universal Copyright Convention and the Berne Convention. The Chi - nese Trademark Law governs the rights of for - eign trade mark holders. The Chinese Copyright Law and related conventions and treaties govern the rights of foreign copyright holders. In China’s legal system, there are different types of trade marks/service marks, such as, unreg - istered marks, registered marks, certification marks and collective marks. According to Article 8 of the Chinese Trademark Law, any sign capa - ble of distinguishing the goods or services of a natural person, legal person or any other organi - sation from those of other persons – including words, devices, letters, numerals, three-dimen - sional signs, combinations of colours, sounds, etc, as well as a combination of such signs – is eligible for application for registration as a trade mark. 2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks
Trade dress, company names and trade names are not stipulated types of trade marks in accordance with the Chinese Trademark Law, but they can also be protected under certain circumstances, mainly by the Anti-Unfair Com - petition Law. There are no specific marks that are protected in a different way to ordinary marks. Generally speaking, marks that are famous out - side of China but are not yet in use or registered in China, are not protected. 2.2 Essential Elements of Trade Mark Protection Distinctiveness is the element required to qualify for trade mark protection. There are two kinds of distinctiveness: one is inherent distinctive - ness and the other is acquired distinctiveness. To prove acquired distinctiveness, the applicant needs to file large amounts of evidence of use. The following factors are considered in an acquired distinctiveness analysis: • the manner, effect and role of the actual use of the sign, ie, whether it is used in the form of a trade mark; • the actual and continuous use of the mark in terms of time, territory, scope, sales scale and other business conditions; and • the degree of knowledge of the mark among the relevant public. 2.3 Trade Mark Rights Trade mark owners have the right to renew, transfer, license or pledge a trade mark. These rights are outlined respectively in Articles 40, 42 and 43 of the Chinese Trademark Law and Article 70 of its Implementation Regulations. All rights granted to trade mark owners persist
64
CHAMBERS.COM
Powered by FlippingBook