Since China’s accession into WTO in 2001, a large number of foreign brands have been rushing to China. As China’s trademark protection system follows the first-to-file principle [1], there is a natural threshold for foreign brands when they enter the Chinese market: their brands must obtain trademark rights in China. However, due to the differences in domestic and foreign trademark systems as well as in culture, there are always some misunderstandings for foreign applicants when obtaining their trademark rights in China. This may lead them to a passive position, either delaying implementation of their business plan, or being forced to withdraw from the Chinese market at worst.
Based on my long-term practice in trademark work, I choose some typical cases as examples, and try to analyze the reasons of the misunderstandings and recommend some ways to deal with them. Due to the limitation of sample collection base, the conclusion is inevitable over generalizing and for your reference only.
Misunderstanding One: trademark constituent elements lacking distinctive characteristics
Let us see the examples [2] below (Table I):
| Samples |  |
 |
 |
| Designated Goods | Hand tools, hand-operated | Cooking utensils, electric | Lotions for cosmetic purposes |
| Nationality of Applicant | Indian | American | French |
The nationalities of the above applicants are different, while they have a common preference that they prefer to use the generic name or features of the special industry (product) as a composition element of the trademark. Since these trademarks have been approved for registration in their own countries, some of them have even obtained a certain reputation after long-term use, the applicants are often reluctant to make changes to the constituent elements of the trademarks when entering the Chinese market. Therefore, the applications are inevitably rejected by the Chinese Trademark Office.
As for the requirements of distinctive characteristics, Article 11[3] of the Trademark Law has clear stipulation. Before filing trademark registration in China, foreign applicants shall ask the Chinese trademark agents to check if the trademark has distinctive characteristics according to Chinese standards. If the trademark to be filed lacks distinctive characteristics, the following solutions may be taken: firstly, to make appropriate modifications to the reproduction of the trademark, such as making special designs on the first letter of the English trademark, using abbreviations or replacing some letters; secondly, if the trademark has been widely used in China, applicants shall preserve carefully the relevant evidence which can be submitted to the Trademark Review and Adjudication Board during the trademark review procedure, to prove that the trademark has obtained distinctive characteristics by widely use.
Misunderstanding Two: non-standard goods/service and too narrow coverage scope
There are two problems included in this misunderstanding:
First, with respect to the non-standard goods/service problem, it means the goods/service which the applicant selected go beyond to the Chinese Classification [4]. This may result in multiple negative consequences [5]:
- Application cannot be filed through e-filing system, which postpones the time for filing;
- After the application is filed, a Notice of Rectification will be issued by the Trademark Office, requiring the applicant to modify the goods/service description. Even if the description is properly modified at the end, the registration procedure will be delayed at least two months;
- If the applicant refuses to modify the goods/service description after receipt of the Notice of Rectification, he/she most likely will receive the Notice of Non-acceptance from the Trademark Office.
Therefore, selecting non-standard goods/service brings nothing but harm to the applicants. It is suggested that foreign applicants ask the Chinese trademark agents to equivalently or similarly convert the non-standard goods/service to standard goods/service before filing the application, trying not to exceed the scope of the Chinese Classification. If the applicant cannot find an equivalent of the goods/service from the Chinese Classification, he/she also has to give a reasonable explanation when responding to the Notice of Rectification, in order to avoid being unaccepted.
Secondly, the coverage of the goods/service is too narrow. Some countries following the first-to-use principle, the designated goods/service of a registered trademark have to be deleted if they are not actually put into use. Therefore, many foreign trademark holders designate one or two goods/services items only when register in their countries, or even use qualifier to further restrict the scope of the goods/service. If such a goods/service description is copied to the trademark registration in China, on one hand, it will lead to the non-standard problem mentioned above. On the other hand, the too narrow coverage problem will appear. In practice, the trademark application for registration which designats only one or two goods/service items will meet less conflictions. However, after the trademark registered, especially while this trademark has obtained high reputation and influence in the Chinese market, trademark preemption in different classes or groups will ensue. In this case, foreign trademark holders have to spend a lot of time, effort and money to clean up this kind of malicious preemption, which is always not worth the candle.
In my view, since China follows the first-to-file principle, foreign applicants should not be limited to their real use goods/service, but consider the long view when filing trademark applications in China. The list of goods/service designated should cover all range of business which the applicants are likely to engage in, and then select the corresponding goods/service items from the Chinese Classification, try the best to cover all relevant classes and groups, leave no room for others to scramble your mark in any relevant goods/service.
For example, Applicant A’s main product is «fairy lights for festive decoration». When selecting goods, besides «fairy lights for festive decoration» in Section One, Group 1101, Class 11, A can also select other goods with a general meaning in this section. In addition, he should also select goods and services in other classes in order to completely cover the related fields of lighting products and accessories thereof. Please see the table below for details:
| Class | Group | Section | Goods/service |
| 7 | 0720 | / | manufacture bulb machine |
| 9 | 0906 | / | Signal lanterns |
| 0909 | / | Flashlights [photography] | |
| 0911 | / | Lanterns (Optical –) | |
| 0913 | Four | Dimmers [regulators] (Light –) [electric] | |
| 11 | 1101 | One | Chinese lanterns |
| Lighting apparatus and installations | |||
| Two | Lighting installations for vehicles | ||
| Three | Germicidal lamps for purifying air | ||
| Four | Curling lamps | ||
| 43 | 4306 | / | Rental of lighting apparatus |
Misunderstanding Three: considering Chinese Pinyin as English
Generally speaking, it is more likely that the brands with high reputation are squatted by others. Therefore, some big companies are very keen on monitoring the preliminary announcement of others’ trademarks which are similar to their core brands, and actively prevent the registrations by filing oppositions, in order to protect their own brands.
It is no doubt that monitoring others’ trademarks is necessary for a brand’s protection. However, some foreign applicants prefer to feed back the monitoring results to the Chinese trademark agents and ask for the feasibility of opposition. Due to cultural differences, some trademarks are deemed to be similar by foreigners, while the Chinese have opposite points, for example (Table II) [6]:
| Cited Trademarks |  |
 |
| Trademarks being Opposed |  |
 |
From the above cases, we can see that most foreigners, including applicants and trademark attorneys, could not understand the Chinese Pinyin well. According to the Chinese reading practice, if a trademark combined by Chinese characters and Pinyin, the Chinese characters will be the major part of the trademark, while the part of Pinyin will only be a reference for pronunciation. Besides, homophone is very common in Chinese language. As such, a same Pinyin, performing the pronunciation function, will refer to different Chinese characters. Take the above TableⅡ as an example, “咖蓝西+KALANXI” and “卡兰西+KALANXI” will not be considered as similar trademarks in the Chinese eyes, even though they share the same Chinese Pinyin [7].
To solve this problem, I suggest the foreign applicants follow the advice from the Chinese trademark agents when planning to file an opposition against a trademark which consists of Chinese characters and English words (Pinyin). If the “English words” are actual Chinese Pinyin, an opposition request should not be filed since there is objectively no confliction.
Misunderstanding Four: fail to preserve sound use evidence
Although China adopts first-to-file principle, use evidence is likely to be required in various trademark procedures such as review for refusal, opposition, invalidation and cancellation for non-use for three consecutive years. From my experience, foreign applicants may have following two problems in providing use evidence: One is that they could not provide any use evidence, which will obviously lead to a very bad result in the procedures, but this is not that I am going to give more words on. The other one is that they provided a large amount of use evidence but most of them are useless. For example, the extraterritorial evidence, or some pictures taken in Mainland China but show no information about shooting time, place or any other critical information about the use of the trademark, such as the applicant’s name, the trademark logo and the designated goods/service, etc.
As for the second one, many foreign applicants are always confused why their request could not be supported while they have already provided a large amount of evidence. Actually, the examiners do not request such a large amount of evidence; they just want the sound evidence. Here below we will give some examples to illustrate what is the sound use evidence according to “already in use and enjoys substantial influence”, latter part of Article 32 [8] of the Trademark Law.
Literally speaking, “already in use” requires that use evidence must take place before the filing date of the disputed trademark. Although the laws do not stipulate the place where the evidence is incurred, there is an implied prerequisite that it must be incurred in Mainland China, since the territorial characters of trademark law. “Substantial influence” refers to the fact that the trademark has been used for a long time in a wide space, which means the applicant has to submit evidences which incurred in consecutive years, and in different provinces or cities in Mainland China. From the above, we can see that sound use evidence must include the information of the time when it is happened as well as the place where it is incurred, and the said time and place should meet the special requirements stipulated by the laws. At the same time, it should include critical information about the disputed trademark, such as the applicant’s name, trademark logo, designated goods/service, etc. Practically, it is not easy for a single piece of evidence to meet all these requirements. Therefore, applicants are often required to provide a chain of evidence, which are scattered in various carriers but supported by each other, in order to make it admissible to the examiners or judges.
For your reference, here is the list of the said common use evidence [9]:
For use on goods:
- use of trademarks on the products, product packages, containers, labels etc. by attaching, stamping, imprinting or knitting, etc., or use of trademarks on attachments, product specifications, handbooks, price lists, etc.;
- use of trademarks on the trading documents concerning sales, including use on sales contracts, invoices, notes, receipts, inspection and quarantine documents for import and export, customs declarations, etc.;
- use of trademarks on media such as broadcast, television, etc., or publications, and advertisements or promotions for products where the trademarks are used by billboards, mailing advertisements, etc.;
- use of trademarks in exhibitions and fairs, including use of trademarks on printing documents and other materials provided in exhibitions and fairs;
- other use of trademarks which is in conformity with laws.
For use on services:
- use of trademarks on the places where the services are provided, including use of trademarks on the manuals of the services, billboards of the services, decoration of the places, clothes of the staff who provide the services, posters, menus, price lists, coupons, stationery, letter paper, etc.
- use of trademarks on the documents concerning the services, including use on invoices, bank slips, agreements on the services, documents for maintenance, etc.;
No. 3, 4 and 5 for use on goods are also applicable for use on services.
In addition, I would like to remind that the evidences provided by a third party have stronger probative force than the ones provided by the applicants themselves. For example, invoices, inspection and quarantine documents for import and export, customs declarations, advertisements via media provided by the third party will be of greater strength than product packages or brochures provided by the applicants themselves. Applicants shall try their best to provide evidence which has stronger probative force.
Conclusion
Trademark right is a kind of industrial property rights, which has territoriality in nature. As a result, the trademark protection systems are more or less different from one to the other in different countries. Misunderstandings are inevitable and which are far more than the above I mentioned. However, these misunderstandings absolutely could be avoided, only if the applicants are willing to follow the Chinese trademark attorney’s advice from the very beginning of the trademark filings, to make proper trademark strategies according to the Chinese laws and practices.
Note:
[1] First-to-file principle, compared with first-to-use principle, is the formulation system of trademark rights. In China, the exclusive right for use of a trademark will not be given to mere use of the trademark. The only way to obtain the exclusive right for use is registration.
Any natural person, legal person, or other organization desirous of acquiring the exclusive right to use a trademark for the goods produced, or services and activities offered by it or him shall file an application for the registration of the goods or service mark with the Trademark Office. Article 4 of Trademark Law of the People’s Republic of China
No trademark application shall infringe upon another party’s existing prior rights. Nor shall an applicant rush to register in an unfair manner a mark that is already in use by another party and enjoys substantial influence. Article 31 of Trademark Law of the People’s Republic of China
[2] Trademark application numbers are 13825305, 13595386 and 13370723 respectively.
[3] The following marks are not permitted to be registered as a trademark:
1) Names, devices, or designs that are generic to a class or group of goods;
2) Marks that merely indicate the quality, principal raw materials, function, use, weight, quantity or other features of the goods in respect of which the marks are used;
3) Other marks that lack distinctive characteristics.
A mark to which the above provisions are applicable but which has acquired distinctiveness through use and is readily distinguishable may be registrable as a trademark.
[4] Chinese Classification is issued by Trademark Office of State Administration for Industry and Commerce of the PRC which is adjusted based on the Nice Classification provided by WIPO and serves as reference for deciding similar goods and services.
[5] The filing date of an application for trademark registration shal1 be the date on which the Trademark Office receives the application documents．
Where the formal requirements of the application are fulfilled and the application form filled out according to the relevant rules， the Trademark Office will accept the application and notify the applicant in writing． Where the formal requirements are not fulfilled or the application form not filled out according to the relevant rules， the Trademark Office will not accept it， and it shall notify the applicant in writing and explain the reason． Where the formal requirements are basically fulfilled or the application form filled out basica1ly according to the relevant rules， but amendments are required， the Trademark Office shall notify the applicant to make the amendments and require him to do so according to the contents prescribed and re－submit it to the Trademark Office within thirty days from the date on which he receives the notification． Where the application is amended and re－submitted to the Trademark Office within the time limit， the date of filing shall be retained． Where the application is not amended within the time limit， the application shall be deemed to have been abandoned， and the Trademark Office shall notify the applicant in writing. Article 11 of Trademark Law of the People’s Republic of China
[6] Cited trademarks are No. G867267 and No. G700271, opposed trademarks are No. 15220267 and No.16129497.
[7] No. 15, Page 69 to 71, of Standards for Trademark Examination and Trial;
[8] No trademark application shall infringe upon another party’s existing prior rights. Nor shall an applicant rush to register in an unfair manner a mark that is already in use by another party and enjoys substantial influence. Article 32 of Trademark Law of the People’s Republic of China
[9] No. 5.3.2 and 5.3.3, Page132, of Standards for Trademark Examination and Trial.
Author:Mr DENG
Chinese Patent and Trademark Attorneys
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