Peculiarities of trademark registration in China

In 2001, Russia and China signed an agreement on good neighborliness, friendship and cooperation between the Russian Federation and the People's Republic of China [1] (hereinafter referred to as the Agreement). The Parties to the Treaty assumed obligations on the basis of mutual benefit to develop cooperation in trade, economic and other areas, to ensure the protection of intellectual property in accordance with their national legislation and international treaties to which they are parties, etc. (Article 16 of the Treaty).

In the years following the entry into force of the Treaty, both states comprehensively contributed to the implementation of their obligations, establishing and expanding strategic partnership, which has become even more relevant in the current political and economic situation.

In particular, at present, one of the promising areas of bilateral cooperation is the trade sector, an important element of which is the ways of individualizing the goods of economic entities.

In China, the main national source of regulation of relations in this area is the Trademark Law of the People's Republic of China, adopted on August 23, 1982 (as amended on April 23, 2019) [2] (hereinafter referred to as the Trademark Law). In addition, China became a member of the Paris Convention for the Protection of Industrial Property in 1985, ratified [3] the Madrid Agreement Concerning the International Registration of Marks [4] in 1989 [5], and its Protocol in 1995 [6].

Thus, there are two trademark registration systems in China - national and international under the Madrid system, when compared, there are both disadvantages and advantages. In particular, the disadvantages of international registration include the need to go through a certain procedure in China with local authorities in order to recognize an international trademark [7], operation and use in China of its own system of subclasses of goods and services, which differs from the international Nice system of classification [8], etc.

In this regard, in order to maximize the protection of their commercial interests in China, experts advise choosing a national trademark registration system. At the same time, it is recommended to take care of the registration of the mark before starting commercial activity, because. In China, the principle of "priority filing" is applied, according to which the acquisition of the exclusive right to a trademark depends on the registration of the mark, without regard to its previous use by others.

A national trademark application is filed with the China National Intellectual Property Administration ( CNIPA ), which also has an electronic filing system. The application and accompanying documentation are submitted in Chinese, but if the application is accompanied by a document in a foreign language, then in most cases it must be accompanied by a notarized translation.

China does not restrict the subject composition of the holders of the exclusive right to a trademark, and not only organizations, but also individuals can apply for its registration (Article 4 of the Trademark Law). However, by virtue of Art. 18 of the Law on Trademarks, foreign individuals and legal entities are not entitled to independently file applications, but must entrust the filing and management of cases related to the registration of a mark to an official specialized trademark agency (patent attorney).

A foreigner or a foreign enterprise in relation to Art. 18 of the Trademark Law means a foreigner or a foreign enterprise that does not have a permanent residence or representative office in China (Article 5 of the Trademark Law Enforcement Regulation [9]). However, as clarified by CNIPA [10], a wholly owned subsidiary of a foreign enterprise established in China in accordance with national law is a Chinese enterprise, and not a location of a foreign company in China. A local office or representative office in China established by law by a foreign company is not the location of the foreign company in China.

The Trademark Law establishes a rather extensive list of cases when a designation is not subject to registration as a trademark. For example, imperative restrictions apply to designations that are identical or similar to the names or symbols of states, international intergovernmental organizations, including their abbreviations, to designations that are contrary to the norms of morality, socialist ethics, may cause damage to religious beliefs and feelings, etc. (Article 10 of the Trademark Law). In turn, dispositive restrictions refer to cases where the designation does not initially have a distinctive character, for example, when it reflects only the function, consumer properties or other characteristics of the use of the product, etc. However, a designation with similar characteristics may be registered as a trademark if it has acquired distinctive features as a result of use and is easily distinguishable (Article 11 of the Trademark Law). This is in line with Art. 9 of the Trademark Law that the designation submitted for registration as a trademark must have conspicuous characteristics, be easily distinguishable and not conflict with the legal rights of third parties.

As a general rule, any designations may be registered as trademarks, including words, graphics, letters, numbers, sounds, three-dimensional (three-dimensional) symbols, color combinations, or any combination of them that can distinguish the goods of an individual, legal entity or other organizations from the goods of other persons (Article 8 of the Trademark Law).

It is interesting to note that, unlike Russia, in China since 2014 registration of a sound designation as a trademark is allowed. In this case, you must provide a qualified sound sample and description of the sound, as well as indicate how the sound designation is used as a trademark. The description of a sound trademark uses musical notations or numbered notations of sound in combination with notes in words; if a sound cannot be described by musical notation or numbered notation, it must be described in words; the description of the trademark must correspond to the sound pattern (clause 5, article 13 of the Regulation on the Application of the Law on Trademarks).

As with traditional signs, a general requirement applies to audio trademarks that signs that directly represent the content, target consumer, quality or function of a product (service) do not have distinctive features. Thus, for example, barks or meows used in pet-related goods or services are not distinctive, but serve as a prime example of the utilitarian functionality of sound [11]. In this regard, the registration of a sound as a trademark presents significant difficulties, primarily related to proving its distinctive features and identification ability in relation to goods (services) of other persons.

Registration of a trademark under the national system provides the owner of the mark with the exclusive right to the registered trademark for a period of 10 years, which is calculated from the date of registration of the trademark. In addition, the law provides the possibility of an unlimited prolongation of the validity of an exclusive right for the same period. At the same time, the renewal is not automatic, but is initiated by the applicant by submitting an appropriate application, otherwise the registered trademark is canceled (Articles 39, 40 of the Trademark Law).

In conclusion, according to the WIPO 2022 report [12], the Chinese office accounted for more than half (55.6%) of all registered trademarks in 2021, which included about 7.8 million classes.

These data confirm that China is rightfully considered one of the most economically developing countries in the world and is of significant interest for international economic partnership, including in the trade sphere.

Sources:

1.“Treaty on Good-Neighbourliness, Friendship and Cooperation between the Russian Federation and the People's Republic of China” (signed in Moscow on July 16, 2001, ratified by Russia on January 25, 2002) // ATP "ConsultantPlus"

2.https://www.wipo.int/wipolex/ru/legislation/details/19559 (Accessed 08/19/2023)

3."Convention for the Protection of Industrial Property" (concluded in Paris on March 20, 1883) (as amended on October 2, 1979) // ATP "Consultant Plus" // ATP "ConsultantPlus"

4.“Agreement Concerning the International Registration of Marks” (concluded in Madrid on April 14, 1891) (as amended on October 2, 1979) // ConsultantPlus ATP

5.https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf (Accessed 08/19/2023)

6."Protocol to the Madrid Agreement Concerning the International Registration of Marks" (signed in Madrid on 06/28/1989) // ATP "ConsultantPlus"

7.Carlo Diego D'Andrea, A Practical Guide to Intellectual Property Law in China // https://rusconshanghai.mid.ru/upload/iblock/fd7/59uprja42lzo0v0wtzb5ckhgvtr9x9ms.pdf (Accessed 08/19/2023)

8.“Agreement on the International Classification of Goods and Services for the Registration of Marks” (concluded in Nice on 06/15/1957, as amended on 09/28/1979) // ATP ConsultantPlus

9.Regulations on the Application of the Trademark Law of the People's Republic of China (Promulgated on 08/3/2002, Revised on 29 April 2014) // https://www.wipo.int/wipolex/ru/text/425591 (Accessed 08/19/2002) .2023)

10.https :// english . cnipa . gov . cn / col / col 2996/ index . html (accessed 08/19/2023)

11.Xia Sara. Trademarking a Sound in China, 2021 // URL: https://harrisbricken.com/chinalawblog/trademarking-a-sound-in-china/ (Accessed 08/19/2023)

12.World Intellectual Property Indicators 2022 edition // https://www.wipo.int/edocs/pubdocs/en/wipo-pub-941-2022-en-world-intellectual-property-indicators-2022.pdf