Translation: Several Regulations on Standardizing the Application and Registration of Trademarks
(Issued Decree No. 17 of the State Administration for Market Regulation on October 11, 2019)
Original Chinese available at: http://gkml.samr.gov.cn/nsjg/fgs/201910/t20191016_307410.html
These Regulations are formulated in accordance with the PRC Trademark Law (Trademark Law) and the Implementing Regulations of the PRC Trademark Law (Trademark Law Implementing Regulations) for the purposes of regulating trademark registration application activities, controlling bad faith trademark applications, maintaining the management order of trademark registration, and protecting social public interests.
Applications to register trademarks shall comply with relevant provisions of laws, administrative regulations, and departmental rules, and be based on an actual need to obtain exclusive trademark rights.
Applications to register trademarks shall observe the principle of good faith and must not include the following acts:
- Bad faith applications to register a trademark that are not made for the purpose of use, as set out under Article 4 of the Trademark Law;
- Copies, imitations, or translations of a well-known trademark belonging to third parties, as set out under Article 13 of the Trademark Law;
- Applications without authorization by an agent or representative to register the trademark of the principal or the party being represented, as set out under Article 15 of the Trademark Law; applications to register a trademark after becoming aware, through contracts, business dealings, or other relationships, of the prior use of the trademark by a third party;
- Damaging the existing prior rights of third parties or using improper means to preemptively register third party trademarks that are already in use and that have a certain degree of influence, as set out under Article 32 of the Trademark Law;
- Applying to register trademarks using deceptive or other improper means;
- Other acts that violate of the principle of good faith, that are detrimental to socialist morals or customs, or that have other adverse effects.
Trademark agencies should observe the principle of good faith. If a trademark agency knows or should have known that an instructing party’s application to register a trademark falls within one of the following circumstances, it should not accept the instructions:
- A bad faith trademark registration application not made for the purpose of use, as set out under Article 4 of the Trademark Law;
- Circumstances as set out under Article 15 of the Trademark Law;
- Circumstances as set out under Article 32 of the Trademark Law.
Apart for applications to register trademarks in connection with its agency services, a trademark agency must not apply to register other trademarks, nor must it use improper means to disrupt the trademark agency market order.
Where the trademark registration department discovers that a trademark registration application is a bad faith trademark registration application not made for the purpose of use, violating Article 4 of the Trademark Law, it should reject it according to law and not publish it.
Specific examination rules will be formulated separately by the trademark registration department in accordance with the Trademark Law and the Trademark Law Implementing Regulations.
If a preliminarily approved and published trademark is opposed during the gazettal period on the basis that it violates these Regulations, and the trademark registration department believes, after examination, that the grounds of opposition have been established, it should issue a decision refusing registration according to law.
If a trademark is under appeal following rejection, or under appeal following refusal of registration, and the trademark registration department believes, after examination, that the trademark falls within circumstances violating these Regulations, it should issue a decision to reject the application or to refuse registration according to law.
If a registered trademark is subject to an application filed within the legally-specified time limit for its registration to be declared invalid on the basis that it violates these Regulations, and the trademark registration department believes, after review, that the grounds for invalidation have been established, it should issue a ruling declaring the trademark invalid according to law.
If a trademark is already registered and the trademark registration department discovers that that the trademark falls within circumstances violating these Regulations, it should issue a declare the trademark invalid in accordance with the provisions of Article 44 of the Trademark Law.
When judging whether an application to register a trademark violates the provisions of Article 4 of the Trademark Law, the trademark registration department may consider the following factors comprehensively:
- The number of trademark registration applications filed by the applicant, or by natural persons, legal persons and other organizations connected to the applicant, the [Goods and Service] Classes specified for use, circumstances relating to trademark transactions, etc.;
- The industry, operating conditions, etc., of the applicant.
- Effective administrative decisions or rulings, or judicial decisions, have already determined that the applicant has previously engaged in bad faith trademark registration activities, or that it has engaged in acts infringing the exclusive rights a third party’s registered trademark;
- The trademark for which registration is applied is identical with or similar to a third party’s trademark that enjoys a certain degree of fame;
- The trademark for which registration is applied is identical with or similar to the name of a famous person, to an enterprise trade name, to an abbreviation of an enterprise name, or to other commercial identifiers;
- Other factors that the trademark registration department believes should be considered.
The assignment status of a trademark will not affect a determination by the trademark registration department regarding circumstances violating Article 3 of these Regulations.
If a registered trademark is not used for three consecutive years without a proper reason, any unit or individual may apply to the trademark registration department to cancel that registered trademark. After the trademark registration department accepts such an application, it should notify the trademark registrant, requiring it to submit evidence use of the trademark, or a proper reason explaining non-use, within 2 months of its receipt of the notice. If no evidence is submitted within the time limit, the evidence submitted is invalid or there is no proper reason explaining the non-use, the trademark registration department shall cancel the registered trademark.
When the trademark registration department makes a decision or ruling as specified under Articles 5, 6 or 7 of these Regulations, it shall gazette the same.
Where applicants file bad faith trademark registration applications in violation of the provisions of Article 3 of these Regulations, the local market supervision bureau at or above the county level at the place where the applicant is located, or at the place where the illegal act has occurred, shall impose administrative penalties such as warnings, fines, etc., as warranted by the circumstances and in accordance with the provisions of Paragraph 4 of Article 68 of the Trademark Law. If there is illegal income, a fine of three times the illegal income may imposed, up to a maximum of RMB 30,000; where there is no illegal income a fine not exceeding RMB 10,000 may be imposed.
Where trademark agencies violate Article 4 of these Regulations, the local market supervision bureau at or above the county level at the place where the applicant is located, or at the place where the illegal act has occurred, shall order correction within a specified time limit, issue a warning and impose a fine of no less than RMB10,000 and no more than RMB100,000 in accordance with the provisions of Paragraph 1 of Article 68 of the Trademark Law. The directly responsible person-in-charge and other directly responsible personnel shall be fined no less than RMB5,000 and no more than RMB50,000. Where a crime has occurred, criminal liability will be pursued according to law. If the circumstances are serious, the National Intellectual Property Administration may decide to stop accepting trademark agency business conduct by that trademark agency and make a gazette announcement to that effect.
The government department issuing administrative penalty decisions should, according to law, publish penalty data to society through the national enterprise credit information publicity system.
Where trademark agencies violate Article 4 of these Regulations, the intellectual property management department should discuss the matter with the head of the agency and require corrections.
The intellectual property administration department and market supervision administration department should actively guide applicants to apply to register trademarks according to law and should guide trademark agencies to engage in trademark agency business according to law, regulating the use of registered trademarks in production and business activities.
The intellectual property administration department should further unblock trademark application channels, improve the trademark registration process, improve the level of public service for trademarks and provide streamlined services for applicants filing direct applications to register trademarks.
The intellectual property administration department should perfect the internal supervision system, strengthening supervision and inspection of matters such as the implementation of laws and administrative regulations by state agency personnel engaged in trademark registration, as well as their observance of discipline.
If state agency personnel engaged in trademark registration work neglect their duty, abuse their power, engage in favoritism or malpractice, handle trademark registration matters illegally, accept money or property from a party, or seeks improper benefits, they should be sanctioned according to law. Where a crime has occurred, criminal liability will be pursued according to law.
Trademark agency businesses should improve their industry self-disciplining standards, strengthen industry self-discipline and impose disciplinary measures against members that violate the industry self-disciplining standards, promptly announcing such disciplinary measures to the public.
These Regulations shall enter into force on December 1, 2019.
Translation by SIPS.