|
3. Trademark 3.1. China Trademark Law and Implementing Regulations Trademark registration in China is fundamental for any company intending initial entry into the China market. These intellectual property rights are protected under the Trademark Law, promulgated on 23rd August 1983 as amended on 22nd February 1993, and Regulations for the Implementation of Trademark Law (hereinafter Trademark Regulations), promulgated on 3rd January 1988 and amended on 15th July 1993. In addition, the Supplementary Regulations for the Punishment of Criminal Offence of Counterfeiting Registered Trademark were enacted on 1st July 1993 to fulfil the necessity of more severe penalties deterring from trademark infringement. [Footnote: Methods for the Administration of Printing of Trademark were promulgated on 8th August 1990.] To acquire the exclusive right to use a trademark, those interested should file an application for the registration of the goods trademark with the Trademark Office. [Art. 37 of Trademark Law.] The service mark is also protected by the Law and its use exclusive of service mark requires registration. [Art. 4 of Trademark Law.] Wherever a registered trademark is used, it must carry the indication of "Registered Trademark" or a sign indicating that it is registered. [Footnote: Art. 7 of Trademark Law.] A registered trademark will be valid for a period of ten years. This period is counted from the date of approval of the registration. [Footnote: Art. 23 of Trademark Law.] If the registrant intends to continue to use the registered trademark one it has expired, it will be necessary to make an application for renewal of the registration within six months before the said expiration. A grace period may be allowed, where the application has not been filed within the period of six months. The registered trademark will be cancelled, if no application has been filed within the grace period. Once a registered trademark has been renewed, it will be valid for another ten years. [Footnote: Art. 24 of Trademark Law.] If a regsitered trademark is cancelled or is not renewed at the expiration, the Trademark Oficce will not, during one year from the date of the cancellation or removal therefor, approve any application for the registration of a trademark that is identical with or similar to teh said trademark. [Footnote: Art. 32 of Trademark Law.] Following the principle established in the 1963 Regulations, the Article 6 of the Trademark Law states that those who use a trademark are responsible for the quality of the goods in respect of which the trademark is used. The Trademark Law also put in charge the administrative for industry and commerce of supervise over the quality of the goods and those bodies are authorised to stop any practice that deceives consumers. [Footnote: Art. 6 of Trademark Law.] In such cases, where such a trademark is used in respect of goods that have been roughly or poorly manufactured, or whose superior quality has been replaced by inferior quality, so that consumers are deceived, the administrative authorities for industry and commerce at different level must order rectification of the situation within a specified period, and may circulate a notice of criticism or impose a fine, and teh Trademark Office may even cancel the registered trademark. [Footnote: Art. 31 of Trademark Law.] Article 9 of the Trademark Law provides that foreigner or foreign enterprise seeking to register a trademark in China must file an application in accordance with any agreement concluded between the People's Republic of China and the country to which the applicant belongs or to the international treaty to which China and the applicant's country are parties or on basis of the principle of reciprocity. In this case or any other matter related to trademark, an organisation is designated by the Chinese government to act as the foreigner's or foreign enterprise agent. [Footnote: Art. 10 of Trademark Law and Art. 2 of Trademark Regulations.] Those applications filing for international registration in China must be done according to the "Madrid Agreement Concerning the International Registration of Marks". [Footnote: Art. 3 of Trademark Regulations.] In addition, Article 14 of the Trademark Regulations states that any foreigner or foreign entreprise applying for a registartion for a registration of a trademark or for any other matters concerning a trademark must use the Chinese language. Those document includes in such matters in a foreign language must be accompanied by a Chinese translation therefor. The notarisation and legalisation of the Power of Attorney and the relevant certificates will be done based on the principle of reciprocity. Those who apply for a registration must, according to the Article 11 of the Trademark Law, indicate the prescribed classification, the class and the designation of the goods in respect of which the trademark is to be used. If the trademark owner intends to use the same trademark for other goods of the same class, different classes, a new application for registration have to be filed. [Footnote: Art. 12 and 13 of Trademark Law.] In the same way, if any device or word of a trademark is to be altered or after the registration, the name, address or other registered matters concerning the registrant change, a new registration or an application regarding the changes must be filed. [Footnote: Art. 14 and 15 of Trademark Law.] The trademark presented must be examine and approve before receiving registration. Where a trademark is identical o similar to another trademark registered or, after examination, preliminarily approved in respect of the same or similar goods, Article 17 states that the Trademark Office will refuse the application and will not publish the said trademark. Article 18 deals with identical or similar trademarks for the same or similar goods which have been filed, but not received preliminary approval, stating that the first filed will be published. In the case of identical or similar trademarks filed on the same day, the earliest used will receive the preliminary approval, after examination, and publication afterward. An opposition against the trademark that has been preliminarily approved is possible within three months from the date of the publication. If no opposition has been filed or the opposition filed is found not justified, then the registration will be approved, a certificate of trademark registration will be issue and the trademark will be published. [Footnote: Art. 19 of Trademark Law.] The Trademark Law also deals with assignment and licensing of registered trademarks. Assignment of a Trademark requires that both the assignor and assignee jointly file an application with the Trademark Office. The assignee is responsible of guaranteeing the quality of goods in respect of which the registered trademark is used. The assignment of a registered trademark will be published after it has been approved. [Footnote: Art. 25 of Trademark Law.] Article 21 of the Trademark Regulation provides further information in assignment. It states that the registrant must, when applying for the assignment of a registered trademark, do the assignment in respect of all his other registered trademarks that are identical with or similar to the said registered trademark in respect of the same or similar goods. In the case of licensing, the trademark registrant may, by means of a trademark licence contract, authorise other person to use his registered trademark. Both parties have, within three months from conclusion of the trademark licence contract, to submit a copy of the contract to the admisnistrative authority for industry and commerce at the county level of his location for reference. [Footnote: Art. 35 of Trademark Regulations.] Even though the licenser is responsible of supervising the quality of the goods in respect of which the licensee uses his registered trademark, the licensee must guarantee the quality of such goods. The name of the licensee and the origin of the goods must be indicated on the goods that bear the registered trademark. The trademark licence contracts are not published, but they must be submitted to the Trademark Office for record. [Footnote: Art. 26 of Trademark Law.] When a party violates such provisions, e.g. when a party has not submitted the required documents, the administrative authority for industry and commerce can impose a fine or even submit the case to the Trademark Office for the cancellation of the registered trademark. So can be done to those who fails to indicate the licensee's name and goods' origin on the goods bearing the registered trademark. [Footnote: Art. 35 of Trademark Regulations.] To fill the gaps of both the Trademark Law and Trademark Regulations, the Law of Anti-Unfair Competition was promulgated on 2nd September 1993. The unfair competition includes acts such as passing off the registered trademarks of others, using without authorisation the names, packaging or decoration peculiar to well-known goods, using names, packing or decoration similar to those well-known goods so that their goods are confused with the well-known goods of other, and forging or falsely using, on their goods, symbols of quality such as symbols of authentication and symbols of famous and high quality goods. 3.1.1. Rights Provide for Foreign Trademark Owners 3.1.1.1. Well-Known Mark Even though Article 37 of the Trademark Law states that the exclusive right to use a registered trademark is limited to those trademarks which have been approved for registration and to the goods in respect of which the use of the trademarks have been approved, there exist an exception in cases where such trademarks fit in the definition of well-known mark. If the trademark owned by a foreigner has not registered in China, there are provisions to protect its trademark from infringement if the registration of an identical or similar trademark is obtained by fraudulent or other illegitimate means. According to Article 27, where a registration of a trademark is acquired by fraud or any other unfair means, the Trademark Office will cancel the registered trademark in question; and any other other organisation or individual may request the Trademark Review and Adjudication Board to make and adjudication to cancel such a registered trademark. Wherever any organisation or individual considers taht a trademark has been improperly registered, Article 25 of the Trademark Regulations provides that, it or he may apply for adjudication by sending two copies of the same "Application for the Cancellation of Improperly Registered Trademark" to the Trademark Review and Adjudication Board. In the case that such a imporperly registered trademark is cancelled, the Trademark Office will have it published. 3.2. Concerning Fora in Trademark Law Enforcement 3.2.1. People's Courts Article 39 states that where the exclusive right to use a registered trademark has been infringed, the infringes may institute legal proceedings directly with the people's court. [Footnote: Article 42 of the Trademark Regulations collects establishes the same proceedings.] 3.2.2. Administrative Authority According to the Trademark Law, the Trademark Office is the responsible for the registration and administration of trademarks. [Footnote: Art. 2 of Trademark Law.] The Trademark Review and Adjudication Board is the administrative authority responsible for handling trademark disputes. [Footnote: Art. 20 of Trademark Law.] Both administrative authorities, however, act interlaced during the registration, opposition and appeal proceedings. In the case where an application for registration of a trademark is refused, the Trademark Office will notify the applicant of the same in writing. The applicant may, within fifteen days from the receipt of the notification, apply for a review to the Trademark Review and Adjudication Board, which will make a final decision and notify the applicant in writing. [Footnote: Art. 21 of Trademark Law.] Even though a trademark has been preliminarily approved and published, any person may file an opposition against such a trademark. The Trademark Office will hear both the opponent and the applicant state facts and grounds and will make a decision. Any dissatisfied party may, within fifteen days from the receipt of the notification apply for a review, and the Trademark Review and Application Board will decide and notify both parties in writing. [Footnote: Art. 22 of Trademark Law.] As mentioned above, the Trademark Office is also responsible of of cancelling a registered trademark in contravention of Article 8 of the Trademark Law and those trademark acquired by means of fraud and any unfair means. The Trademark Review and Adjudication Board is, however, the authority which makes an adjudication to cancel such a registered trademark. In those cases, the opponent has a period of one year from the date of approval of the trademark registration to apply for adjudication. [Footnote: Art. 27 of Trademark Law.]
|
