By Ms Haiyu Li and Mr Tingxi Huo of the MARQUES China Team.

On 13 December 2021, the China National Intellectual Property Administration (CNIPA) issued the Criteria for Determining General Illegal Trade Mark Acts to strengthen trade mark administration, unify the enforcing criteria, and improve enforcement. The Criteria, composed of 35 rules, more clearly define some important statutory concepts and specify the scenarios of illegal acts.

The Criteria list the 10 types of general illegal acts relating to trade marks:

1. Failure to use a registered trade mark where it is necessary;
2. Use of a forbidden sign as a trade mark under Article 10;
3. Use of the terms WELL KNOWN MARKS in Chinese;
4. A licensee’s failure to indicate its name or the location of production;
5. Unilateral change of a registered trade mark, the registrant’s name, address or other registered items;
6. False representation of registration;
7. Failure to fulfil the administrative obligations relating to collective or certification marks;
8. Failure to fulfil the administrative obligations of trade mark printing;
9. Filing trade mark applications in bad faith; and
10. Other acts violating the trade mark administrative order.

Foreign entities should pay special attention to Rule 15, under which a trade mark that is eventually rejected, cancelled or invalidated according to Article 10 of the Trade Mark Law shall not be used as a trade mark any more, to avoid investigation and penalty.

In addition, according to Rule 14, where an unregistered trade mark in use has multiple meanings and one of the meanings is probably to make the public believe that it belongs to the scenarios prescribed in Article 10.1.6-10.1.8 of the Trademark Law, an illegal act may be affirmed.

Under Rule 23, where a foreign party uses a trade mark not registered in China, it shall not use the registration symbol ® or other symbols or terms meaning registered trade marks. When a mark is registered in a foreign country but not China, it would be safer to have the registration symbol deleted before the goods enter the Chinese territory.

It is highly advisable for all trade mark users, owners and professionals to immediately study the Criteria, which will come into effect on 1 January 2022. Although the relevant authorities do not have sufficient resources to timely monitor each and every illegal act and fully enforce the Criteria, competitors might enthusiastically report breaches.

Ms Haiyu Li and Mr Tingxi Huo are members of Chofn IP and the latter is a member of the MARQUES China Team