McDermott Will & Emery has a strategic alliance with MWE China Law Offices, a separate law firm based in Shanghai. This China Law Alert was authored by MWE China Law Offices lawyers Wendy Wu and Jessie Liu.New requirements for formalities of trade mark applications from the Chinese Trademark Office, in addition to new rules and criteria issued by the Supreme Court of the People’s Republic of China, significantly affect the application process as well as the authorization, determination and protection of trade mark rights.
The Chinese Trademark Office (CTMO) recently issued new formality requirements for all applications to be filed with the CTMO, including new applications, oppositions, cancellations and assignments records, effective 1 July 2010. Non-compliance with the new requirements will result in an automatic rejection of an application.
On 20 April 2010 the Supreme Court of the People’s Republic of China (PRC) issued an opinion relating to the hearing of administrative cases regarding the authorization and determination of trade mark rights, which took effect on the issuance date. In this opinion, the PRC Supreme Court clarified new criteria for hearing administrative cases involving trade mark granting and ownership determination, which will have a significant impact on the trade mark protection strategies of foreign investors with registered trade marks doing business in China.
New CTMO Application Requirements
Regarding the new requirements, some are only iterations of former requests, but the following revisions should receive more attention:
Execution of power of attorney for trade mark application
Without special claim, all rights of authorization will be deemed as ‘regular’ authorization, and the applicant is requested to indicate ‘regular authorization’ in the Rights of Authorization column. If the right of authorization includes the rights of disposition, the application should list the detailed matters under authorization in the Rights of Authorization column. Further, the new power of attorney requests the applicant indicate the specific class for each of the specific trade mark application in the Class column (the CTMO did not make this request before).
Application for trade mark registration
The applicant must sign the application form and affix its company seal. The same applies to applications made through trade mark agents.
Application for opposition
The applicant must sign and affix its company seal on the opposition application form and the opposition grounds. The same applies to applications made through trade mark agents.
Determining if a Mark has Negative Impact on the Public Interest
Section 3 of the PRC Supreme Court’s opinions discusses the applicability of Article 10 of the PRC Trademark Law regarding negative impacts on the public interest. When an examiner considers whether a mark negatively affects the public interest, the examiner should limit his examination scope to include only those areas of national politics, economic, cultural, religious, ethnic and other public interests. No private injuries should be considered in determining the negative impact under Article 10 of the PRC Trademark Law. Furthermore, the principle of this section also applies to trade mark litigation. Hence, it suggests that in order to dispute a trade mark, the injury must be related to public, not private injuries.
Qualifying a Foreign Mark as a Trade Mark
Sections 4–9 of the opinions deal with how to determine whether a foreign mark is distinctive enough to qualify as a registered trade mark in China. Generally, a foreign mark consisting only of a famous place name or a generic name of certain products would be considered lacking in distinctiveness and therefore, not qualify as a trade mark in China. The new opinions now give more specific guidelines on how the distinctiveness of a mark is determined. For example, the sections emphasize that a foreign mark should be interpreted based on the industry and looking at the totality of the circumstances.
The PRC Supreme Court opinions also adopted the criteria of ‘common knowledge of the relevant public’ in determining whether a disputed mark is distinctive. According to the opinion, the people’s court shall examine and determine whether the disputed trade marks are distinctive as a whole, based on the common knowledge of the relevant public of the goods on which the trade marks in question are used. For example, when foreign texts used in a disputed mark may indicate general characteristics of the products, but the relevant Chinese public is able to distinguish the origin of the goods, the trade mark in question shall be recognized as distinctive.
Damaging the Existing Prior Rights of Others
Sections 12–18 of the new opinions discuss circumstances under which a party may not damage the existing prior rights of others. The opinions state prior right exists at the time a mark is granted. If a party intentionally files an application knowing that the mark has been used and already has certain recognition, then the intentional act is wrongful and in bad faith.
The CTMO’s new requirements on formalities of applications to be filed with the CTMO were promulgated to assist the applicant in properly and accurately filing applications. The opinions issued by the PRC Supreme Court supplement the existing Trademark Law and Trademark Review and Adjudication Rules, and also clarify some important issues in trade mark applications that were silent in the Trademark Law. The opinions established certain rules and criteria for the people’s courts to properly hear Trademark Administrative Cases. These new rules and criteria will have a significant impact on trade mark protection and enforcement strategies of foreign investors with registered trade marks doing business in China.