CBL’s Introduction
Unregistered trademarks are eligible for protection in China despite its reputation as a first-to-file country. The owner of a famous trademark who does not own a registration in China has the right to challenge the unlawful use of their brand through a nuanced set of procedures. The rules below, translated by CBL, explain how you can use oppositions or trademark trial & appeals to exercise your rights, how to prove consuming public recognition of your brand. It also explains what administrative procedures Chinese government officials must follow in response to your petition.
Contents
Requirements to Make a Claim (§§3-7)
Administrative Procedures (§§10-17)
Famous Trademark Determination and Protection Rules
Section 1 The purpose of these Rules is to provide for adjudication of famous trademarks and protection of the rights of famous mark owners under the PRC Trademark Act and its Administrative Regulations (the “Trademark Act” and “Administrative Regulations”).
Section 2 A trademark is famous if it is widely recognized by the consuming public in the People’s Republic of China; “consuming public” includes consumers, service providers, distributors, producers, and all other individuals involved in the distribution of the goods or services associated with the mark.
Section 3 The Trademark Office and Trademark Trial and Appeal Board will make a determination on whether a mark is famous and whether it should be afforded protection as a famous mark during examination, dispute resolution, and investigations into trademark violations as necessary and upon request.
Section 4 Famous mark determinations shall only be made when requested for specific cases.
Section 5 Any party may file a notice of opposition with the Trademark Office under §33 of the PRC Trademark Act and petition for famous mark protection under Trademark Act §13 upon providing evidence that their mark constitutes a famous trademark.
Section 6 Any party appealing a trademark registration refusal or petitioning the cancellation of a trademark registration may file a written request for famous mark protection under Trademark Act §13 upon providing evidence that their mark constitutes a famous trademark.
Section 7 Trademark infringement cases involving famous trademarks fall under the jurisdiction of municipal (including prefecture and autonomous prefecture) business regulators and their parent agencies. Requests to investigate potential trademark violations may be filed with the municipal (including prefecture and autonomous prefecture) business regulator or their parent agency in the location where the suspected violation occurred, and complainants can also request famous mark protection under Trademark Act §13 upon providing evidence that their mark constitutes a famous trademark.
Section 8 Requests for famous mark protection must be filed in good faith, and requesters are liable for the authenticity of all submitted documentation.
Section 9 The following can be used as evidence of compliance with the China Trademark Act §14(a):
(a) Proof of the degree of recognition of the mark among the consuming public.
(b) Proof of the duration of use of the trademark, including proof of scope and records of the mark’s use and registration. Proof of use over at least five years must be submitted for unregistered trademarks. Proof of use over at least five years or at least three years of registration renewals must be submitted for registered trademarks.
(c) Proof of the duration, extent, and geographic reach of advertising and publicity of the mark over the past three years, including the type, geographic extent, and amount of advertising and promotional activities.
(d) Proof that the mark has been previously recognized and afforded protection as a famous mark in China or abroad.
(e) Other documentary evidence in support of the mark’s fame, including sales revenues, market shares, net profits, tax payments, and geographic extent of sales of goods or services offered under the mark over the last three years.
The “three years” and “five years” used above refer to the three years or five years of continuous use preceding an opposition to trademark registration, petition for registration cancellation, or request for famous mark protection during trademark violation proceedings.
Section 10 The Trademark Office and Trial and Appeal Board will process requests for famous mark protection made under §5 and §6 of these Rules within the time limits specified in Trademark Act §35, §37, and §45.
Section 11 Business regulators shall review requests to investigate trademark violations made under §7 of these Rules and their supporting materials to decide whether to proceed with an investigation pursuant to the Business Regulator Administrative Penalty Rules. Following a decision to initiate an investigation, the business regulator will complete preliminary reviews of all requests for famous mark protection and their supporting materials and verify compliance with Trademark Act §13 and §14, Administrative Regulations §3, and §9 of these Rules. Upon passing the preliminary review, the business regulator will submit all requests for famous mark determination and copies of investigation materials to their parent agencies within 30 days of the start of an investigation. All requests found noncompliant after a preliminary review shall be promptly resolved pursuant to the Business Regulator Administrative Penalty Rules.
Section 12 Provincial business regulators (includes autonomous administrative regions and home rule cities’) receiving requests for famous mark determinations from municipal regulators will review and verify all requests and materials supporting such requests for compliance with Trademark Act § 13 and §14, Administrative Regulations §3, and §9 of these Rules. Conforming requests and copies of investigation materials shall be submitted to the Trademark Office within 30 days of materials for a famous mark determination were received. All requests found noncompliant after a preliminary review shall be returned to the original requesting agency for prompt resolution pursuant to the Business Regulator Administrative Penalty Rules.
Section 13 The Trademark Office and the Trademark Trial and Appeal Board shall weigh the factors listed in §14(a) of the Trademark Act and §9 of these Rules when making a determination of fame. However, recognition does not require that all conditions be met.
Local business regulators must cooperate with and assist the Trademark Office and the Trademark Trial and Appeal Board in verifying information during famous mark determination.
Section 14 The Trademark Office will review all materials submitted by provincial (including autonomous regions and home rule cities’) business regulators and issue a decision to the requesting provincial business regulator (includes autonomous region or home rule cities) if it determines that a trademark constitutes famous mark.
Business regulators initiating case proceedings must resolve all cases within 60 days of receiving notice of the determination and shall report administrative penalty decisions back to their provincial agencies (includes autonomous regions and home rule cities) pursuant to law. Provincial (including autonomous regions and home rule cities) business regulators shall submit a case report and a copy of the administrative penalty decision to the Trademark Office within 30 days.
Section 15 Business regulators at all levels of government shall improve protections afforded to famous marks during trademark registration and administration to protect both consumer and trademark registrant legal rights. Possibly criminal Trademark violations shall be promptly referred to the appropriate justice agency.
Section 16 Requests for famous mark protection made under Trademark Act §13 can be filed during trademark registration examinations, dispute resolution, and violation investigations, and include evidence of the mark’s prior recognition and fame in China.
The Trademark Office, Trademark Trial and Appeal Board, and business regulators initiating investigations into trademark violations will approve requests for famous mark protection made under the same circumstances as previously approved requests for the same mark, provided they are supported by evidence of prior recognition, all other required materials are submitted, and no valid opposition has been filed.
Section 17 The Trademark Office shall revoke any famous mark designations obtained by any party in a trademark infringement case through illegitimately including without limitation fraud or falsification, and will send notification thereof to the provincial business regulators (includes autonomous regions and home rule cities) that submitted the famous mark determination request.
Section 18 The parent agency shall order local subordinate business regulators to make corrections and publicize their failures if: perform their duty to check materials supporting requests for famous mark determination in compliance with §11 and §12 of these Rules; or fail to assist in verifying information as required pursuant to §13 (b) of these Rules; or fail to process and report violations pursuant to §14(b) of these Rules.
Section 19 Business regulators at all levels of government shall create and refine oversight systems for famous mark determination.
Section 20 Government employees involved in the determination and protection of famous marks found to have engaged in negligence, abuse of power, misconduct for personal gain, unlawful famous mark determination, or soliciting bribes and other improper benefits from parties to infringement cases shall be penalized at law.
Section 21 These Rules shall take effect 30 days after their issuance, and will supersede the previous Rules for the Determination and Protection of Famous Marks issued by the National Administration for Industry and Commerce on April 17, 2003.
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Source: https://www.gov.cn/gongbao/content/2014/content_2758497.htm