Intellectual Property Rights
The Trademark Law of the People’s Republic of China was first adopted in 1982. The State Council promulgated Regulations on the Implementation of the Trademark Law in 1983. The Trademark Law was revised in 1993 and 2001, and in 2002 new Implementing Regulations were issued, in part, to bring China’s trademark legislation into compliance with the WTO Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). The revised Trademark Law extended protection to collective marks, certification marks and three-dimensional symbols, as required by TRIPs.
China has a "first-to file" system that requires no evidence of prior use or ownership, leaving registration of popular foreign marks open to third parties. China joined the Madrid Protocol in 1989, which requires reciprocal trademark registration for member countries, which include the United States.
Foreign companies seeking to distribute their products in China are advised to register their marks and/or logos with the Trademark Office. Further, any Chinese language translations and appropriate Internet domains should also be registered. As with patent registration, foreign parties must use the services of approved Chinese agents when submitting the trademark application, however foreign attorneys or the Chinese agents may prepare the application. Recent amendments to the Implementing Regulations of the Trademark Law allow local branches or subsidiaries of foreign companies to register trademarks directly without use of a Chinese agent.
The reader should also be aware that there is a body of supplemental directives and interpretations issued by the Supreme People’s Court concerning trademarks.
For additional information, please see the Ask the Experts section below.
Coverage - What Can be Covered?
Article 8 of the Trademark Law states that the following visually perceptible marks may be the subject of an application for trademark: words, designs, letters, numbers, three-dimensional signs, and color combinations, as well as combinations of the aforementioned elements. Companies can register the following types of trademarks in China:
Product trademarks are those that are affixed to and identify goods
Service trademarks are trademarks that service providers use to identify the company providing the service, such as the trademark for an airline
Certification marks are symbols that are controlled by an organization that has the ability to oversee certain products of services and which are used by companies or individuals other then the overseeing organization on their products or services to verify the original place of manufacture, the raw materials used, the method of manufacture, the quality or other specific features
Collective trademarks are symbols registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group.
A mark is eligible for trademark registration if it is distinctive, easily distinguishable, does not conflict with the prior lawful rights obtained by a third party and is not otherwise prohibited by the Trademark Law.
The following symbols are prohibited and cannot be registered as trademarks:
Symbols that are the same as or similar to the Chinese State name, national flag, national emblem, military flags or military decorations of the PRC, other country or intergovernmental or international organization, unless approved by such government or organization
Symbols that are the same as special names of places where Chinese government offices are located, or names or images of symbolic buildings
Symbols that are the same as or similar to official symbols or inspection imprints that indicate the implementation of controls or that give guarantees, unless authorized;
Names and symbols that are the same as or similar to the Red Cross or Red Crescent
Symbols that are racially discriminatory
Symbols that make exaggerated claims or are fraudulent
Symbols that harm socialist moral behavior or have other undesirable effects
Further, symbols shall not be registered as trademarks that:
Contain a product's generic name, graphics or model
Merely directly indicate a product's quality, main raw materials, function, weight, quantity or other characteristics
Lack any prominent characteristics
Well Known Marks China has had special provisions for the protection of "well-known" marks since 1996. Protection of foreign well-known marks was also required as part of the 1992 U.S.-China Memorandum of Understanding on Intellectual Property Rights, as well as part of China's accession to the Paris Convention in 1985. China is required to provide national treatment to foreign marks holders, as part of its WTO accession as well as other international commitments. However, many companies continue to complain that their marks are not treated in the same manner as Chinese marks.
Recognition of a trademark as well known is of particular importance to larger, multinational companies. A trademark that is registered in one class of use may not be protected against registrations or infringement in another class of use, unless it is well known. Under China's system of administrative enforcement, treatment of a mark as well-known may facilitate administrative raids and/or criminal enforcement against commercial scale infringers. However, Chinese authorities have also promulgated from time to time lists of trademarks for "enhanced enforcement" or have judicially recognized marks as well-known on a case-by-case basis, which occasionally may provide the same results as well-known mark recognition by administrative authorities.
Many Chinese companies use their "well-known mark" recognition as a marketing tool, which has little to do with intellectual property protection per se.
Protection under Treaty
Article 24 of the Trademark Law provides that where, within six months of applying to register a trademark outside China, the trademark registrant applies to register the same trademark for the same type of product in China, they will receive priority registration in accordance with bilateral agreements between that country and China, or multilateral agreements to which both countries are party. China is a member of and has ratified the following agreements relating to trademark protection:
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (since 2001)
Berne Convention for the Protection of Literary and Artistic Works (since 1992)
Madrid Agreement Concerning the International Registration of Marks (since 1989
Paris Convention for the Protection of Industrial Property (since 1985)
Convention Establishing theWorld Intellectual Property Organization (WIPO) (since 1980)
In 1988, China promulgated the international classification of commodities with registered trademarks, bringing its classification into line with international norms.
Market Entry Planning
As China's economy continues to expand and China implements its WTO commitments, increasing numbers of small and medium size U.S. companies have sought – and found – opportunities to sell their goods in China. With U.S. exports to China up approximately 20 percent since 2001 and foreign investment in China growing, more U.S. firms than ever before have questions about how to succeed in the China market, and at the top of their list is how to protect their company's intellectual property. Since joining the WTO, China has strengthened its legal framework and amended its laws and regulations regarding IPR. However, despite stronger statutory protection, China continues to be a haven for pirates. Further, pirated products made in China are increasingly finding their way into international markets.
New market entrants should develop a strategy for protecting their company's intellectual property early in the planning stages of doing business in China. Registration of trademarks before the product enters the stream of commerce in China is the primary means of ensuring that the mark is eligible for protection under Chinese law, and ensuring that trademark infringement can be remedied through either administrative or judicial proceedings.
Prevention – The best weapon is prevention. Be clear of your rights before your product ever crosses the border into China. Use every legal means available to mitigate the risks from the start, including:
Register your trademark in China
Develop and register a Chinese language version, and do so throughout the other jurisdictions of "Greater China," including Hong Kong, Taiwan, Macao and Singapore
If you do not create a Chinese mark, the market will do so, creating a Chinese "nickname" for your product. Your company may not like the image this mark projects, or someone else in China may like it so much they register it in their own name, forcing you to "buy it back."
Register your trademarks in neighboring countries both for potential expansion and to block others from registering marks to use on products consumers may confuse with yours
Execute and register trademark licensing contracts. If you are allowing another party to use your mark, under Chinese law you must establish a trademark licensing contract. Chinese law also requires the registration of trademark licensing contracts in order for the licensee to remit royalty payments overseas in foreign exchange. Note that the recorded license agreement may take legal precedence over a non-recorded agreement in the event of a dispute between the licensor and licensee
Conduct a survey to identify potential products infringing your trademark or products bearing a trademark confusingly similar to yours but registered by another party
Establish a corporate system for monitoring the marketplace for infringing products
Engage the services of a trademark agent or law firm to monitor the Trademark Gazette for registrations similar to your mark. The Gazette is the authoritative journal for publication of trademarks that have been approved on a preliminary basis. Monitoring the Gazette will allow a rights holder to comment on or oppose registration of similar marks in the same or related classes. Some companies may be able to handle this function in-house.
Protection – If you discover that your trademark is being infringed, do something immediately to protect and enforce your rights. Investigations, raids, seizures and well as civil litigation and criminal prosecutions are some of the tools available. Before deciding which tools to use, however, ask yourself the following preliminary questions:
Is the trademark registered or otherwise capable of being protected in China?
Is the harm in China or overseas?
What is the source of the harm? Competitors? Employees, agents or contractors>
Professional Advice – Engage the assistance of legal professionals with both China and IPR expertise early in the process, and involve them in the development of your overall Chinese business strategy. Membership in anti-piracy organizations can also help.
The Trademark Registration Process
Register your mark early! While the United States confers trademark rights upon the first party to use a trademark in commerce, China has established of a "first-to-file" system that grants trademark rights to the party that first applies to register the trademark.
China does recognize the international registration of trademarks based on the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, to which China and the United States are signatories. Companies that would like to determine the application of an international trademark registration in China should seek advice from an experienced foreign or Chinese attorney.
Step 1: Select a Chinese Trademark Agent
The Trademark Law provides that a foreign company that has not established a physical presence in China must register its mark through a State-designated trademark agent. For a list of these agents, please see the Ask the Experts section below. A foreign company that has a presence in China is not required to use such agents and may apply directly to the Trademark Office, although many foreign companies do use a trademark agent to assist in the process.
Certified trademark agents typically prepare the application, conduct a pre-application trademark search, and submit the trademark application to the Trademark Office of the State Administration of Industry and Commerce (SAIC). If a foreign company decides to use a Chinese or foreign law firm to prepare the application, that law firm is still required to work through a State-designated trademark agent if the trademark applicant has not established a physical presence in China.
The standard rate charged by certified trademark agents for preparation and submission of a trademark application is RMB2,000 per application for one class, maximum 10 items (designated goods) within a class. Additional items within the same class may be registered for RMB100.
Step 2: Determine Whether the Mark is Eligible for Registration
A trademark agent or lawyer will determine whether a trademark is eligible for registration under Chinese law. See "Coverage – What Can Be Trademarked", above. The agent or lawyer also will conduct a preliminary search at the Trademark Registry for registered similar or identical trademarks.
Step 3: Complete the Application Forms
Complete and sign the Trademark Application Form and Power of Attorney, also referred to in China as a "Letter of Entrustment." For copies of these forms, please see the Ask the Experts. Attach five black and white trademark specimens, or attach one black and white specimen and five color specimens. Each specimen should not exceed 10 cm in length and 5 cm in width.
All documents must be submitted in the Chinese language. Documents submitted in languages other than Chinese are deemed "not to have been submitted" to the Trademark Office.
Step 4: Select the Number of Classes
China uses the International Classification of Goods, which categorizes commodities and services into 42 classes, with sub-classes. A trademark must be registered in connection with at least one particular class of goods. However, it is often a good idea to register your mark in classes of products you may make or sell in the future, or where there is room for consumer confusion.
Step 5: Perform a Pre-Application Trademark Search
A preliminary trademark search is necessary to ensure that there is no prior conflicting registration. Normally a registered trademark agent will do this search, using a database of only words and Chinese characters. The database is not the official register, and does not include pending trademark applications. The China Trademark Office does not maintain a publicly available database of registered trademarks which applicants can use to evaluate the availability of a mark or likelihood of infringement.
Step 6: Application for Priority Registration under an International Agreement
If the applicant is entitled to priority registration under an international treaty or agreement, the applicant must prepare a letter of priority and attach it to the Trademark Application Form. A photocopy and translation of the foreign trademark registration must accompany the application for priority registration. These documents must be certified by an organization designated by the State Council, which is usually a registered notary.
The applicant should also simultaneously submit a copy of the trademark application submitted in a signatory country (although the deadline to submit this is three months after the application in China). Failure to provide this document within a timely manner, or failure to submit a written statement to request the right of priority, is deemed a waiver of the right.
Step 7: Trademark Agent or Applicant Submits Application to the SAIC Trademark Office in Beijing
Step 8: The SAIC Trademark Office Review
The Trademark Office will review the trademark application materials to ensure that it they are complete and comply with all the application requirements, and that the trademark meets criteria for eligibility for registration.
Step 9: Preliminary Approval and Publication in the Trademark Gazette, or Rejection of the Application
If the Trademark Office determines that the application packet is complete and no other similar or identical trademark has been previously registered, the Trademark Office will grant preliminary approval and publishes the trademark in the Trademark Gazette. The trademark application is subject to public opposition for a period of three months.
Where the Trademark Office decides to reject the application, it must notify the applicant in writing. Within 15 days of receipt, the applicant may request administrative review by the Trademark Review and Arbitration Board (TRAB). If the applicant is dissatisfied with the TRAB decision, it may seek judicial review by filing an administrative appeal to the People's Court within 30 days of receiving written notification of the TRAB decision.
Step 10: Registration
If no party files an opposition to a mark that has received preliminary approval within three months, the Trademark Office will register the trademark and publish notice of the registration in the Trademark Gazette.
Opposition to a Preliminary Approval of Registration
If your company discovers that another company has received preliminary approval for a mark you believe would infringe on your company’s mark, your company may file an opposition. This must be done within three months of publication of preliminary approval in the Trademark Gazette. A party filing an opposition must submit to the Trademark Office an “Application for Trademark Opposition” in duplicate setting out the relevant information. Thereafter, the parties are entitled to provide additional information, within strict time limits. It is important for a company to use experienced trademark counsel to advise on filing an opposition.
Cancellation of a Registered Trademark
If your company discovers that another company has completed registration of a trademark you believe infringes on your company’s mark, your company may attempt to cancel the registered mark. However, cancellation is more difficult that an opposition and is more time consuming and expensive.
Enforcement Approaches – How to Address Infringement
What Constitutes Infringement?
Article 52 of the Trademark Law, as supplemented by Article 50 of the Trademark Law’s Implementing Regulations, provides that the following acts are considered infringement:
Using a trademark that is the same as or similar to a registered trademark on the same or similar goods without the authorization of the registered trademark holder
Selling products that violate the exclusive right to use a registered trademark
Counterfeiting or fabricating without authorization a mark or a symbol that is part of a registered trademark of another person, or selling marks or symbols that have been made or fabricated without permission
Modifying a registered mark without the authorization of the registered owner and putting on the market products with the modified mark
Use of identical or similar words, graphics or packaging as that of a registered trademark in connection with identical or similar goods to mislead others
Causing harm in other respects to the registered trademark holder’s right to exclusive use
Providing transport, storage, mailing, hiding or other conveniences in order to facilitate others in the infringement of the exclusive rights of a registered trademark holder
Three Types of Actions Against Infringers:
Article 53 of the Trademark Law allows a registered trademark owner to seek redress for trademark infringement through the People's Court or through administrative adjudication. Where the infringement is serious, the Trademark Office should refer the complaint to the Public Security Bureau for prosecution.
1. Administrative Adjudication
In most cases, rights holders seek administrative adjudication of trademark infringement because the investigations can occur shortly after filing the complaint, the rights holder may in some cases participate in the investigation, and only a few weeks are required for a determination of infringement or non-infringement and, if appropriate, the imposition of a remedy.
Disadvantages of the administrative channel are: the rights holder receives no compensation for IPR infringement as a result of administrative adjudication; sometimes administrative agencies refuse to investigate a complaint due to local protectionism, corruption or lack of resources; and fines are too low to put the infringer out of business or deter future criminal activity.
The Trademark Office of the SAIC has responsibility for handling trademark infringement complaints, in addition to its role in trademark registration and administrative recognition of well-known marks.
The Trademark Division of each provincial and municipal Administration for Industry and Commerce (AIC) has authority to investigate trademark infringement within its geographic jurisdiction, seize evidence and adjudicate complaints. The administrative remedies that may be imposed by a local AIC Trademark Division include:
- Cease and desist orders
- Confiscation and destruction of trademark representations that my be separated from the goods, in which case the goods may be returned to the alleged infringer
- Confiscation and destruction of counterfeit goods where the trademark representation cannot be separated from the goods
- Confiscation of materials, tools and equipment used mainly for production of infringing goods and trademark representations
- Fines up to a maximum of three times the illegal profit, or in cases where it is difficult to determine the illegal profit, a maximum fine of RMB100,000 (US$12,000). The law does not specify minimum fines. "Illegal profit" is normally calculated based upon the infringer's documentation of illegal gain or declared value of the counterfeit product.
Note: Compensatory damages cannot be awarded to the rights holder through the administrative adjudication process. The rights holder can seek compensatory damages through civil litigation.
2. Civil Litigation
Jurisdiction and Venue: According to the Supreme People's Court "Several Questions on the Application of Law in Trial of Trademark Civil Dispute Cases" (Interpretation), which came into effect October 16, 2002, a registered trademark owner may file a lawsuit in the place (a) where trademark infringement occurred, (b) where infringing products are stored, sealed, or detained, or (c) where the infringer is domiciled (Article 6). Article 7 explains court jurisdiction in cases involving multiple defendants who may have committed infringing acts in different locations. A foreign right holder is allowed to file its complaint before the Economic or Intellectual Property Division of the People's Intermediate Court nearest to one of these three places.
Elements of the Complaint: The rights holder is required to demonstrate that (a) the alleged infringing act involves a mark that is identical or similar to a registered trademark; (b) the infringing representation of a registered trademark was used in connection with or affixed to similar goods or services; (c) the unlawful act interfered with the registered trademark holder's right of exclusive use or caused the registered trademark holder economic loss.
Statute of Limitations: The statute of limitation for bringing a suit to remedy trademark infringement is two years, commencing on the date the trademark registrant knew or should have known about the act of infringement. Article 18 of the Interpretation describes some circumstances in which a lawsuit may be brought after two years.
Preliminary Injunctions/Preservation of Evidence: A trademark registrant, licensee, or other party of interest may petition the people's court to issue a preliminary injunction and order preservation of evidence. The petition may be filed in the place where the trademark infringement occurred, or where the respondent resides. The petition must explain the reason that the legal interests of the trademark holder will be irreparably harmed if the infringement does not cease immediately, or explain that relevant evidence is likely to be lost or difficult to obtain at a later time.
Under Article 58 of the Trademark Law, the court may require the petitioner to "provide security" or a bond prior to the issuance of the injunction. The amount ordered is usually a percentage of the value of the goods. Within 48 hours of receiving a petition, the court must decide whether to grant the petition. The preservation measures will be removed in the event that the petitioner does not file a lawsuit within 15 days after execution of the preservation measures. See "Supreme People's Court, Interpretation in Response to Practical Questions Concerning Pre-litigation Injunctions and Preservation of Evidence," effective January 22, 2002.
Remedies: In addition to the administrative remedies listed above, the People's Court may also award compensatory damages to the trademark rights holder. In cases where it is difficult to determine the damages suffered by the rights holder, the court may order the defendant to pay an amount not to exceed RMB500,000 (US$60,000) as provided in Article 56 of the Trademark Law.
3. Criminal Prosecution
Investigation: In circumstances where trademark infringement is "serious," the Trademark Office is required to refer the complaint to the public security bureau for investigation, which in turn may recommend prosecution by the procuratorate. The criteria for determining whether a case is serious enough to merit criminal prosecution is not stated in the laws and regulations that govern trademarks, but Chinese officials have stated in other administrative directives that the quantity of infringing products produced, the amount of illegal gain, or the prospective injury to public health and safety are factors to be considered.
Sentencing: Articles 213 - 215 of the Criminal Law set forth sentencing guidelines in connection with infringement of a registered trademark. If the circumstances are "serious" or if the amount of sales is "huge," the defendant may be sentenced to three to seven years imprisonment, and may also be fined. The law does not stipulate what constitutes a serious circumstance or huge amount of illegal income.
The sentencing guidelines for "crimes of producing and marketing fake or substandard commodities," as described in Article 140 of the Criminal Law, are an indication of what may be considered a serious offense that harms public health and safety.
Article 140 Any producer or seller who mixes impurities into or adulterates products, or passes off a fake product as a genuine one, a defective product as a high quality one, or a substandard product as a standard one -
if the earnings from sales are more than RMB50,000 but less than RMB200,000, the defendant shall be sentenced to a fixed-term of imprisonment not to exceed two years and shall also, or shall only, be fined not less than half but not more than twice the amount from illegal sales;
if the amount of earnings is more than RMB200,000 but less than RMB500,000 the defendant shall be sentenced to a fixed-term imprisonment of two to seven years and shall also be fined not less than half but not more than twice the amount from illegal sales;
if the earnings from illegal sales exceed RMB500,000 but are less than RMB2 million, the defendant shall be sentenced to fixed-term imprisonment of seven years and shall also be fined one-half to twice the amount of the earnings from illegal sales;
if the earnings from illegal sales are more than RMB2 million the defendant shall be sentenced to fixed-term imprisonment of 15 years or life imprisonment, and shall also be fined one-half to twice the amount of earnings from illegal sales or be subject to confiscation or property.
Some foreign trademark holders have complained that the local AICs rarely refer cases for criminal prosecution due to inter-agency conflicts within the local government. Administrative agencies may have a financial incentive to adjudicate cases that are more appropriate for criminal prosecution because the administrative fines paid by the respondent go to the coffers of the administrative agency.
The "Provisions on Standards for Prosecution of Economic Crimes," jointly issued by the Supreme People's Procuratorate and the Ministry of Public Security on April 18, 2001, sets out criteria for criminal prosecution. The standards apply to manufacturers, sellers (wholesale and retail) and others involved in counterfeiting activity. If the circumstances meet the criteria set out below, the procuratorate shall initiate an investigation and prosecute the case.
The following articles cover trademark issues:
Article 61 Counterfeit of Registered Trademark (Article 213 of the Criminal Law)
In a case involving the use of a mark identical to a registered trademark on the same goods without the permission of the owner of the registered trademark shall be prosecuted in the following circumstances:
1. Individual counterfeiting of another's registered trademark where the illegal turnover exceeds RMB100,000
2. A unit counterfeiting of another's registered trademark where the illegal turnover exceeds RMB500,000
3. counterfeiting a well-known trademark or a trademark of medication for human consumption
4. Not reaching these thresholds, but counterfeiting the registered trademark of another after having been subjected to the administrative penalty twice before;
having negative impact.
Article 62 Sale of the Counterfeit Goods of a Registered Trademark (Article 214 of the Criminal Law)
The knowing sale of counterfeit goods of a registered trademark shall be prosecuted where the amount of sale is over RMB100,000 by an individual or over RMB500,000 by a unit.
Article 63 Illegal Fabrication of Representations of a Registered Trademark and sale of Such Representations (Article 215 of the Criminal Law)
A case involving the counterfeit and/or unauthorized fabrication of representations of another's registered trademark or sale of such representations shall be prosecuted where one of the following circumstances is suspected:
1. Illegal fabrication of representations of a registered trademark and sale of over 20,000 pieces or sets, or where the illegal gain exceeds RMB 20,000 or the illegal turnover exceeds RMB200,000 in the aggregate
2. Illegal fabrication of representations of a well-known trademark and sale of such representations
3. Not reaching the above-said number or amount but illegally fabricating representations of a registered trademark and sale of such representations after have been subjected to the administrative penalty before
4. Sale of the illegally fabricated representations of a registered trademark by illegal means such as bribes, etc.
Another agency that rights holders may approach to combat copyright infringement is the General Administration of Customs. The Implementing Measures of Customs for the Protection of Intellectual Property Rights (Customs Measures) and the subsequent Regulations of the People's Republic of China on the Customs Protection of Intellectual Property Rights, issued by the State Council, contain general rules and guidelines for Customs' role in IPR enforcement. Through registration with The General Administration of Customs ("GAC") in Beijing, the Customs Measures may provide protection for all categories of IPR, including copyrights, and prohibit the import or export of goods in violation of those rights.
Proactive Registration with Customs: Registering proactively with the GAC before an infringement occurs allows a copyright holder to expedite the approval of an application for Customs protection if an infringement actually does occur. An application for proactive registration should contain the following information:
The name, nationality or registered locality, address, legal representative and primary business location of the copyright owner
Information on the copyright to be protected, including documentation establishing copyright ownership
A list of persons authorized or licensed to use the copyright
Information on the products to which the copyright is related, including the manufacturer, primary importers or exporters, primary points of customs entry or exit, key product characteristics and price
The name, place of manufacture, key product characteristics, standard prices, primary importers or exporters, and primary points of customs entry or exit, and if known, information concerning any infringing products
Other information as required by Customs
The application should be accompanied by the following documentation:
A photocopy certified by the registration authority of the registration certificate of the copyright holder
Documentary proof of copyright ownership
Other documents required by Customs
The GAC must respond to an application within 30 working days of receipt. The application and subsequent approval forms will be placed on file immediately. The application and approval is valid for ten years, renewable within six months of the end of the term. Any changes should be reported to Customs within 30 working days after the changes are archived.
Request for Customs Protection When an Infringement Occurs: An application for customs protection from an actual infringement should include the following:
The copyright being infringed
The Customs number assigned to the request upon approval
The name, address, legal representative or primary place of business of the suspected infringer
The name, specifications and other information concerning the infringing products
Possible ports of entry or exit, the time, mode of transport and recipient (imports) or sender (exports) of the infringing products
Evidence establishing the infringement
Measures requested to be taken by Customs
Other information required by Customs
If a proactive request is not already on file for a copyright for which customs protection is being sought, the request must be submitted along with the application for Customs protection. In addition, if Customs discovers goods that appear to infringe upon a copyright already on file, Customs may on its own initiative seize the goods. Customs will then provide immediate written notice to the copyright holder, who must file an application for Customs protection within three days after receipt of such notice.
If the copyright holder requests that the infringing products be seized, the copyright holder must post a security deposit with Customs equal to no less than the equivalent value of the goods, which shall be used to indemnify the losses caused to the consignee or consigner if the detainment is found to be inappropriate and to pay for warehousing, custody and disposal fees. The specific measures of payment will be determined by the GAC.
If Customs agrees to seize the products, Customs will send a Customs Holding Receipt to the recipient or sender of the products, as the case may be, and provide written notice to the copyright holder.
The recipient or sender of the goods may submit a written explanation as to why the products do not infringe upon the copyright. Customs will provide written notice of the objections to the copyright holder. If the recipient or sender of the goods believes that the products do not infringe upon the copyright, it may, after posting a security deposit with Customs equivalent to the value of the goods, request Customs to release the goods. If the intellectual property right holder fails to bring a lawsuit to the people's court within a reasonable time, Customs will refund the guaranty bond.
If the recipient or sender of the goods raises no objection, Customs shall have the authority to dispose of the products immediately as "infringing products."
Unless the copyright holder has referred the matter to a local copyright authority or a People's Court within 15 days of receiving notice of the seizure, Customs will commence an investigation.
Customs may release the products held under any of the following circumstances:
The products are found not to be infringing after investigation by Customs or by a local copyright authority
The case filed with a People's Court is dismissed or the court does not impose an order for preservation of evidence
The copyright holder does not respond to notice received from Customs within the stipulated period or abandons its request for Customs protection
When products are released under any of the above, Customs will refund the security deposit after deducting costs for storing, safekeeping and handling the goods and any compensation payable to the importer or exporter.
If Customs, a local copyright authority or a People's Court determines that the seized products are infringing, the products will be confiscated and disposed of by Customs. Customs may also impose penalties equivalent to the CIF price (cost, insurance, freight) (in the case of imports) or FOB price (free on board) (in the case of exports) of the goods.
A party may request reconsideration of a decision by Customs within 30 days of receiving written notice of the imposition of a penalty, or within 30 days of public notice of the imposition of the penalty if written notice cannot be provided. Customs must determine a request for reconsideration within 90 days of the date that application for reconsideration is filed. A dissatisfied party may appeal a decision on reconsideration to the relevant People's Court within 30 days.
Section 337 is applicable when pirated goods are entering the U.S. market.
Administrative and Judicial Review of Trademark Office Decisions
Formerly, decisions made by the Trademark Review and Arbitration Board (TRAB) were not subject to judicial review. This was changed when the Trademark Law was revised to bring China's regulations into compliance with the WTO TRIPS Agreement.
Review of a decision regarding an application A party that is dissatisfied with a decision made by the Trademark Office to reject an application for trademark registration may appeal to the TRAB within 15 days of receiving notification of an administrative decision. Where the applicant is dissatisfied with the TRAB decision, it may seek judicial review by filing an administrative appeal to the People's Court within 30 days of receiving written notification of the TRAB decision.
Review of other decisions. Articles 41 through 43 of the Trademark Law set forth the circumstances under which an interested party may seek administrative review of other decisions made by the Trademark Office. Article 41 provides that if circumstances of registration are inconsistent with Articles 13 (well-known marks), 15 (misrepresentation of authority to register the trademark belonging to the principal), 16 (geographic indications), or 31 (use of improper means to pre-emptively register a third party's trademark that is already in use) of the Trademark Law, the owner of the trademark or a materially interested party may, within five years of the date of registration of the trademark, request that the TRAB cancel the registered trademark. However, claims raised by an owner of a well-known trademark shall not be subject to this time limitation.
Article 43 provides that after the TRAB has rendered a ruling that results in maintaining or canceling a registered trademark, a dissatisfied party may institute proceedings before an appropriate People's Court within 30 days of the date on which he/she receives notification of the TRAB decision. The court's division with responsibility for administrative litigation will hear the case, rather than the division that hears intellectual property disputes as a court of first instance.
Section 337 is applicable when pirated goods are entering the U.S. market.
Twice per year, usually prior to Consumer Protection Day in March and later in the autumn, the Chinese government coordinates nationwide campaigns to remove counterfeit products from the market. These campaigns are initiated by the Chinese government rather than private rights holders. Each year the campaigns feature a new product, which is added to those which are always of concern: counterfeit farm chemicals, composite fertilizers, seeds, building materials, auto parts, cigarettes, medicines, disposable needles, cosmetics, and other personal care products. The campaigns are led by the administrative agencies that are responsible for enforcement of the Product Quality Law, Anti-unfair Competition Law, and Criminal Law.
Chinese government agencies claim such campaigns are effective because they are conducted on a large scale and are highly publicized. Corrective measures may include revocation of a business license and suspension of manufacturing; seizure and destruction of raw and semi-processed materials, manufacturing devices and equipment, packaging and finished counterfeit products; and closure of wholesale markets that typically provide a venue for sale of counterfeit goods. On some occasions, these campaigns include a public education component to discourage consumers from purchasing counterfeit products.
Ask the Experts
Disclaimer: Inclusion of material in This IPR ToolKit does not constitute legal advice and is not a substitute for advice of legal counsel and is subject to change according to the laws of the People's Republic of China. The United States Government will strive to update and improve this IPR ToolKit as information becomes available and as U.S. government resources allow. Additionally, the U.S. Government, the U.S. Department of Commerce, its employees, and its contractors, assume no legal liability for the accuracy or, completeness, or usefulness of any information, resource, or process contained disclosed herein.
Links to External Web Sites
Links to web sites outside the U.S. Federal Government or the use of trade, firm, or corporation names within the U.S. Department of Commerce web sites are provided for the convenience of the user. Such links or use does not constitute an official endorsement or approval by the U.S. Ggovernment of any private sector web site, product, or service.
- Trademark Law of the People's Republic of China
- New Changes to Trademark Protection in China (10/01)
Legal Text: (Comments from a Chinese Law Firm.)http://www.lehmanlaw.com/lib/library/Laws_regulations/IP/imp_tr_law.htm
- Implementing Regulations under the Trademark Law of the People's Republic of China (11/01)
- National Regulations Issued on the Protection of Olympic Marks (3/02)
- Is Your Trademark Legally Well-known? (5/03)
- Madrid Agreement Concerning the International Registration of Marks and Related Information
- Implementing Measures Concerning International Registration of Marks under the Madrid Agreement
Trademark Protection, Registration and Adjudication
PRC - New Rules on Cases Before Trade Mark Review and Adjucation Board (12/02) - then scroll to "Trademark Registration and Advice"
PRC - Supreme Court Interpretation on Civil Trade Mark Disputes (Comments from a U.S. Law Firm) - then scroll to "Trademark Registration and Advice"
How to Complete a Trademark Application (Comments from a Chinese Law Firm) - then Scroll down to "How do foreigners or foreign enterprises file trademark registration applications in China?"
State Intellectual Property Rights Office
Judicial Protection of IPR in China
2004 White Paper on IPR Protection in China
Judicial Protection of IPR in China (list of laws)
Specific Trademark Websites
Judicial Interpretation on the Application of Law to the Trial of
Trademark Dispute Cases Issued
Judicial Interpretations Made by PRC Supreme Court Relating to Application Law in Hearing Trademark Civil Disputes
IP Rights Protection in Civil Procedures in China(2)
Q: What must a foreign trademark holder do to become eligible for trademark protection in China? Q: What is the duration of trademark protection in China? Q: Where should a trademark owner file a complaint alleging trademark infringement? Q: If a trademark owner selects the administrative channel, can the owner obtain compensatory damages? Q: What administrative corrective measures may be imposed against the infringer by the local AIC trademark division? Q: What is the criteria for criminal prosecution? Q: What are the minimum and maximum criminal punishments? Q: Is it possible to prevent the defendant from destroying evidence?
Frequently Asked Questions
A: The registration system is voluntary. However, protection is not offered to a company that claims "first use" in China. China has a "first to file" system that grants trademark rights based on the time of trademark registration. Trademark applications must be filed at the SAIC's Trademark Office. See above for more details on registration and mandatory use of certified trademark registration agents by some types of foreign companies.
A: A registered trademark is valid for a period of ten years, calculated from the time on which the registration is approved.
A: File the complaint with the local AIC Trademark Division, usually in the place where trademark infringement occurred.
A: No. A registered trademark holder may only seek compensatory damages through civil litigation.
A: The Trademark Division may issue a cease and desist order, confiscate and destroy goods to which are attached illegal representations, confiscate materials, tools and equipment used to produce counterfeit goods, impose fines up to the maximum of three times the illegal gain or in cases where it is difficult to determine the illegal gain, administrative authorities may impose a maximum fine of RMB100,000 (US$12,000). A complainant is entitled to a written decision regarding the corrective measure taken.
A: In practice, it appears to be RMB50,000 (US$6,000) in illegal gain. However, the "Provisions on Standards for Prosecution of Economic Crimes," issued by the Supreme People's Court in l993, provide for lower thresholds.
A: If the circumstances are "serious" or if the amount of illegal gain is "huge," the defendant may be sentenced to imprisonment a minimum of three years, maximum seven years, and may also be fined.
A: Yes. A trademark holder may seek a preliminary injunction from the court. The rights holder is required to post a bond.
Q: What must a foreign trademark holder do to become eligible for trademark protection in China?
Q: What is the duration of trademark protection in China?
Q: Where should a trademark owner file a complaint alleging trademark infringement?
Q: If a trademark owner selects the administrative channel, can the owner obtain compensatory damages?
Q: What administrative corrective measures may be imposed against the infringer by the local AIC trademark division?
Q: What is the criteria for criminal prosecution?
Q: What are the minimum and maximum criminal punishments?
Q: Is it possible to prevent the defendant from destroying evidence?