On 22 November 2021, the China National Intellectual Administration (CNIPA) issued the new Guidelines on Trademark Examination and Review. Ling Zhao of the MARQUES China Team reports.

The Guidelines are effective from 1 January 2022. According to the CNIPA, the Guidelines aim to regulate trade mark examination procedures, and to ensure the consistency in the application of laws and regulations.

The release of the Guidelines is just about in time to accommodate the amendment of the China Trademark Law and the continuing increase in trade mark filings.

New guiding opinions

The Guidelines include a whole new section of guiding opinions on formality examination and the procedures for trade mark applications, oppositions, invalidations, reviews, cancellations, classification of goods/services, specifying composing elements of trade marks for trade mark search, formality examination on applications for change of trade mark ownership, trade mark renewal, formality examination of Madrid trade marks, and other procedural matters relating to trade mark cases.

The Guidelines have also enriched guidance on the substantive examination of trade mark cases, especially on key issues such as the examination of bad faith trade marks without intent to use, as stipulated in Article 4 of the amended China Trademark Law, trade marks contrary to public order or morality, trade marks of geographic or state names and well-known trade mark protection.

The Guidelines also provide various practical examples to illustrate the guiding opinions on the application of specific articles of the China Trademark Law.

Bad faith trade mark without intent to use

According to Article 4 of the amended China Trademark Law, “trade mark applications filed in bad faith without intent to use shall be rejected”. How is it determined if a trade mark application is filed in bad faith one without intent to use?

According to the Guidelines, “without intent to use” refers to situations where the applicant does not have genuine intention of use, or does not have any plan to use the mark, or there iss no possibility that the applicant may use the mark based on reasonable inference. The Guidelines provide 10 specific situations that constitute “bad faith trade marks without intent to use” in Article 4 of the China Trademark Law.

The Guidelines also provide that the following two situations do not belong to “bad faith trade marks without intent to use” in Article 4:

1. The applicant files marks identical with or similar to its major mark in different classes for defensive purpose;
2. The applicant files a moderate amount of marks for its future business.

Trade marks contrary to public order or morality

The Guidelines point out that the first paragraph of Article 10 of the China Trademark Law prohibits the use of signs detrimental to public order, good customs and other public interests as trade marks.

A trade mark application containing these signs will be strictly examined, and its registration and use shall be prohibited in principle. If a sign has multiple meanings or modes of use, as long as one of the meanings or modes of use is easy to make the public think that it belongs to the circumstances specified in paragraph 1 of this article, it can be deemed to violate the provisions of that paragraph. The specific mode of use of the sign is generally not considered.

Trade mark of a geographic name

The Guidelines point out that the distinctiveness of geographical names as trade marks is not strong and they could be misleading.

Although the administrative divisions below the county level or foreign geographical names unknown to the public in China are not prohibited from being used as trade marks, if the corresponding regions are famous for producing certain goods or providing certain services, it is still necessary to comprehensively examine whether the signs are misleading in relation to the designated goods and services.

Trade mark of a state name

In accordance with Article 10 of the China Trademark Law, applications identical with or similar to the state names of foreign countries shall not be used as trade marks. However, with the consent of the government of that country, the prohibition provision generally does not apply.

The applicant must submit written documents to show the government of that country consents to registration of the mark. Where the applicant has obtained registration of the trade mark on the same or similar goods and services in the foreign country, it shall be deemed that the foreign government has agreed.

However, if a foreign government clearly indicates that the trade mark registration in its country is not deemed as authorisation, or has other explicit requirements for authorisation, a trade mark registration in that country shall not be deemed as having the consent of the foreign government.

Well-known trade mark protection

Regarding the request for well-known trade mark recognition for the second time or more, the Guidelines provide that:

• if the trade mark requested has a record of being protected as a well-known trade mark;
• if the well-known trade mark holder has submitted evidence to show that the well-known status of the trade mark can extend to the present case, while the scope of protection in the present case is basically the same as the previous one; and
• the other party has no objection to the well-known status, or no sufficient evidence to support its objection,

then the well-known protection claim can be granted, based upon the protection record and in combination with the evidence in the file.

Ling Zhao is a trademark attorney and attorney-at-law with CCPIT Patent and Trademark Law Office, and a member of the MARQUES China Team