Jan 2022

China

Sections

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Contributing Firm

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1 . Trademark

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1.1. Sources of law

The principal sources of national law and regulation relating to trademarks include the Trademark Law of the People’s Republic of China (PRC) (last amended in 2019), the Implementing Regulations of the Trademark Law of the PRC (last amended in 2014) and other laws, regulations, administrative rules, judicial interpretations, administrative interpretations, as well as local regulations, judicial replies, administrative replies, and so on. There are also several international treaties related to trademarks, such as the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the Madrid Agreement and the Madrid Protocol, the Nice Agreement concerning the International Classification of Goods and Services, and the Trademark Law Treaty (TLT).

In the event of a conflict, the provision of the international treaty prevails over the national laws, except those on which the PRC has announced reservation; the law in force supersedes the regulations, rules, judicial interpretations and administrative interpretations. Judicial and administrative interpretations are of parallel legal force, but implemented by the courts and administrations respectively.

Although PRC practices first-to-file principle, well-known unregistered trademarks and unregistered trademarks with certain impact are also protected.

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1.2. Substantive law

The Trademark Law of the PRC distinguishes well-known trademarks and trademarks with a reputation. The term “famous trademarks” is not a legally recognized term in PRC.

For the proprietor of a registered trademark with a reputation, the protection scope is almost the same as that of a common registered trademark, but when determining whether or not two marks have constituted similar marks on similar goods or services, the Chinese authorities will consider the reputation of the mark seeking protection and tend to give a slightly broader protection.

For the proprietor of a well-known trademark that has been registered in the PRC, it could prohibit third parties from registering or using a trademark which is a replication, an imitation or a translation of the well-known mark, in relation to non-identical or non-similar goods or services.

For the unregistered well-known trademarks, the proprietor could prohibit third parties from registering or using a trademark, which is a replication, imitation or translation of the well-known trademark, in respect of identical or similar goods or services.

In the PRC the trademarks belonging to the “luxury industry” do not enjoy a broader range of protection than other trademarks and there is no rule protecting the “aura of luxury” surrounding them in a way that differs from that of a trademark with a reputation belonging to another industry.

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1.3. Enforcement

The proprietor of a trademark which is well known by the relevant public may request protection of a well-known trademark when it is of the view that its rights are infringed upon. The request for well-known trademark recognition could be filed together with the relevant petition before the National Intellectual Property Administration of the PRC (CNIPA), the relevant courts and the relevant Administration for Market Regulation.

The fame of the mark must be established in order to have it recognized as a well-known trademark. The following factors will be taken into account for recognizing a well-known mark:

  • the extent of the relevant public's familiarity with the said trademark;
  • the duration of continued use of the said trademark;
  • the duration, extent and geographical scope of any promotional campaign for the said trademark;
  • the record of the said trademark being protected as a well-known trademark; and
  • any other factors for the said trademark's fame.

The proprietor should provide as much evidence as possible proving that the mark is well known by a substantial portion of the relevant public in the PRC, and the following is usually required and helpful to prove reputation:

  • Statistics demonstrating the general sales, revenue, income, net profit, tax amount, sales area, market share, and advertising expenditure for at least 5 years preceding the petition or prior to the application date of the disputed/opposed trademark, preferably issued or published by authoritative organization or guild. Normally, auditing reports concerning advertisements and sales of the products bearing the trademark and market share data issued by local authoritative organization or guild would be very helpful.
  • Sales materials including contracts, invoices, packing lists, certificates of origin, bills of lading, certificates of quarantine, customs clearance document, order list, etc.
  • Promotional materials including contracts, invoices, payment documents and so on, as agreed with local advertisement companies as well as copies of the advertisements and promotional materials (TV programs, newspapers, periodicals, internet, outdoor signboards, posters, brochures, advertising leaflets, and so on).
  • Documents and materials relating to promotional or sponsored events and activities.
  • Official support such as official decisions, court judgments and the like indicating that the mark has been protected as a well-known mark, and report on assessment of the value of the mark as an intangible asset issued by qualified assessment organization in the PRC.
  • Honors and awards the trademark has obtained in the PRC.

Oral testimony, affidavit or expert evidences do not have high probative force in comparison with the above evidences.

When there is a conflict between different types of right like trademark right, domain name right and trade name right, the basic principle is to protect the prior right. And the protection of a trademark is usually stronger than any other rights such as domain name right and trade name right.

A registered trademark can be enforced against a domain name on condition that the domain name is identical or similar to the registered trademark, which is likely to cause misidentification among the relevant public, and that the owner of the domain name does not enjoy any rights over the domain name or the distinctive part of the domain name, but has bad faith in registering or using the domain name.

Pursuant to Article 58 of the Trademark Law of the PRC, use of others’ registered trademark or an unregistered well-known trademark as an enterprise name to mislead the public which constitutes unfair competition shall be dealt with pursuant to the Anti-Unfair Competition Law of the PRC.

There are no specific regulations regarding whether or not a trademark could be enforced against its unauthorized use in social media. However, if such use has constituted use of the trademark in respect of identical or similar goods or services or such use has caused confusion or harmed the interests of the owner of the trademark, the owner of the registered trademark or well-known unregistered trademark could stop such use based on the Trademark Law of the PRC.

There are no specific regulations regarding whether or not a trademark could be enforced against its unauthorized use in comparative advertising. However, if the comparative advertising does not reflect the facts or it has constituted an unfair completion deed, the owner of the registered trademark or well-known unregistered trademark could stop such use according to the Advertising Law and Anti Unfair Competition Law of the PRC.

There are no specific provisions clearly indicating whether or not a trademark could be enforced against its unauthorized use in parody. But if such parody is made by the competitors, the owner of the trademark could stop such use according to Anti Unfair Competition Law of the PRC.

A trademark owner is entitled to choose taking action claiming either trademark infringement or unfair competition for the same set of facts, but not both.

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2 . Copyright

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2.1. Sources of law

The principal sources of copyright related law and regulation include the Copyright Law of the PRC, the Implementing Regulations of the Copyright Law of the PRC and other laws, regulations, administrative rules, judicial interpretations, administrative interpretations, as well as local regulations, judicial replies, administrative replies, and so on. The PRC is also member country of several international treaties such as the Berne Convention for the Protection of Literary and Artistic Works, Universal Copyright Convention, the International Convention for the Protection of Performers, Producers or Phonograms and Broadcasting Organizations, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.

In the event of a conflict, the provision of the international treaty prevails over the national laws except those on which the PRC has announced reservation; and the law in force supersedes the regulations, rules, judicial interpretations and administrative interpretations. Judicial and administrative interpretations are of parallel legal force, but implemented by the courts and administrations respectively.

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2.2. Substantive law

An open list of the copyrightable works is provided, which includes written works, oral works, musical, dramatic, quyi (ancient Chinese performing art), choreographic and acrobatic works, works of fine art and architecture, photographic works, audiovisual works, graphic works and model works such as engineering design drawings, product design drawings, maps and schematic diagrams, computer software, other intellectual achievements that conform to the characteristics of the work.

Objects of industrial design are copyrightable if they meet the requirements of copyrightable works on original, reproducible, and artistic characters, such as works of applied art.

The rights covered by copyright include both personal rights (or moral rights) and property rights, which include the rights of publication, authorship, alteration, integrity, reproduction, distribution, lease, exhibition, performance, projection, broadcast, information network dissemination, production, adaptation, translation, compilation and other rights which shall be enjoyed by the copyright owner. Among these rights, moral rights include the rights of publication, authorship, alteration and integrity.

Regarding the work created in the course of employment, the copyright shall be enjoyed by the author, but the legal entity or other organization shall have the right to give priority to the use within the scope of its business. But the following situations are exceptions, and in such case, the author shall enjoy the right of authorship, and other rights of copyright shall be enjoyed by the legal entity or other organization: 

  • A work created by mainly using the material and technical conditions of a legal entity or other organization and for which the legal entity or other organization is responsible.
  • A work created by staff of newspapers, periodicals, news agencies, radio stations and television stations.
  • A work created in the course of duty for which the copyright is enjoyed by a legal entity or other organization as stipulated in laws, administrative regulations or contracts.

As to other kinds of works excluding the works created in the course of employment as mentioned above, the copyright belongs to the author, which could be a citizen who creates the work, or a legal entity or other organization, if the work is created under its auspices, on behalf of its will, and with the said legal entity or other organization assuming the responsibility.

The ownership of copyright in a commissioned work shall be agreed upon by the principal and the trustee through a contract. If there is no explicit agreement or contract, the copyright belongs to the trustee.

The copyright owner can assign in whole or in part the rights except for the moral rights and the parties should sign an assignment agreement in writing. The author cannot transfer or waive their moral rights.

No time limit is set on the term of protection for an author’s rights of authorship, alteration and the right to protect the integrity of the work.

In respect of a work of a citizen, the term of protection of the right of publication and the rights of reproduction and other rights to be enjoyed by the copyright owner is the lifetime of the author and 50 years after their death, expiring on 31 December of the 50th year after their death. In the case of a work of joint authorship, the term shall expire on 31 December of the 50th year after the death of the last surviving author.

As for a work of a legal entity or other organization, or a work created in the course of duty, whose copyright (except the right of authorship) is owned by a legal entity or other organization, the term of protection of the right of publication and the right of reproduction and other rights to be enjoyed by the copyright owner shall be 50 years, expiring on 31 December of the 50th year after the first publication of such work. However, any such work that has not been published within 50 years after the completion of its creation shall no longer be protected by the Copyright Law of the PRC.

As for audio-visual works, the term of protection of the right of publication is 50 years, ending on 31 December of the 50th year after the completion of the creation of the works; The term of protection of the rights except for moral rights shall be 50 years, ending on 31 December of the 50th year after the first publication of the work. However, if the work has not been published within 50 years after the completion of the creation, it shall no longer be protected by the Copyright Law of the PRC.

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2.3. Enforcement

It is not compulsory to do copyright registration in the PRC, but it is possible and normally recommended to do so as early as possible. A Copyright Registration Certificate is considered as prima facie evidence to prove ownership of copyright. Further solid evidence may also be required to prove the creation date, publication date, and so on, especially if the copyright registration date is later than the contested objective or if the ownership of copyright is questioned by the contested party, and normally such solid evidence occurring outside China should be notarized and legalized. Neither copyright deposit nor notice is required.

To have industrial designs protected by copyright, it should be proven that the industrial designs belong to works under the Copyright Law of the PRC, which means that the industrial designs should be original and artistic. Evidence such as judgment and a copyright registration certificate proving the industrial designs have already been protected as copyrighted works in other member countries of the Berne Convention is helpful. Acceptance of oral testimony, affidavit, and expert evidence is at the judge’s discretion.

Substantial similarity and contacts are necessary and sufficient to establish copyright infringement.

Copyright can be enforced against a trademark, domain name, trade name, registered design patent, and other distinctive signs.

Copyright can be enforced against its unauthorized use in social media, comparative advertising, and parody unless the use could be considered as “fair use” according to the law.

The defenses available to an alleged infringer are fair use, expiration of term of protection, and statutory license.

The following ways of use are considered as “fair use”, however, the name of the author or the name of the work shall be specified, and the normal use of the work shall not be affected, nor shall the legitimate rights and interests of the copyright owner be reasonably damaged:

  • use of others’ published works for the purpose of the user’s own personal study, research or appreciation;
  • appropriate quotation from others’ published works in one’s own work for the purpose of introducing or commenting on a work or explaining an issue;
  • inevitable reappearance or quotation of published works in newspapers, periodicals, radio stations, television stations or other media for the purpose of reporting news;
  • republishing or rebroadcasting by newspapers, periodicals, radio stations, television stations and other media, of the current event articles on political, economic and religious issues, which have been published by other newspapers, periodicals, radio stations, television stations or other media, unless the copyright owner declares that they are not allowed to publish or broadcast;
  • publishing or broadcasting by newspapers, periodicals, radio stations, television stations and other media, of speeches delivered at public gatherings, unless the author declares that publication or broadcasting is not permitted;
  • adapting, compiling, broadcasting or reproducing in a small quantity of published works for classroom teaching or scientific research in schools, for the use of teaching or scientific researchers, but publishing or distribution is not allowed;
  • use of published works by State organs within a reasonable range in order to perform their official duties;
  • reproduction of works collected by libraries, archives, memorial halls, museums and cultural centers for the purpose of displaying or preserving versions;
  • performance of published works free of charge, which is not charged to the public, nor paid to the performers, and is not for profit;
  • copying, painting, photographing and video recording of works of art set up or displayed in public places;
  • translation of works created in the national common language published by Chinese citizens, legal entities or organizations into works in the language of ethnic minorities for publication and distribution in China;
  • providing published works to dyslexics in an accessible way that they can perceive; and
  • other circumstances stipulated by laws and administrative regulations.

In addition, in compiling and publishing textbooks for the implementation of compulsory education and the national education plan, a person may, without the permission of the copyright owner, compile in the textbooks fragments of published works or short written works, musical works, or single artistic works, photographic works and graphic works, but shall pay remuneration to the copyright owner in accordance with regulations, indicating the name of the author and the name of the work, and shall not infringe upon other rights enjoyed by the copyright owner in accordance with the Copyright Law of the PRC.

In respect of computer software, the prescriptions on “fair use” include:

  • The owner of legal duplicated copy of the software has the rights to load the software into a device with information processing capability such as a computer according to the needs of use; make a backup copy to prevent damage to the duplicated copy, but these backup copies shall not be provided to others for use in any way, and the backup copies should be destroyed when the owner loses the ownership of the legal copies; make necessary modifications in order to use the software in the actual computer application environment or improve its function and performance. However, unless otherwise agreed in the contract, the modified software shall not be provided to any third party without the permission of the software copyright owner.
  • Use of the software by means of installing, displaying, transmitting or storing the software for the purpose of learning and studying the design ideas and principles contained in the software.

A valid copyright that is unenforceable is mainly due to the following reasons:

  • a work with weak original creation; or
  • other fair uses of such work as mentioned above.

For the same set of facts, a copyright holder is not allowed to take action claiming both copyright infringement and design infringement and/or unfair competition. The copyright holder is entitled to choose either copyright infringement or design patent infringement or unfair competition claim.

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3 . Design

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3.1. Sources of law

The principal sources of law relating to designs include the Patent Law of the PRC, which sets out the requirements for patent prosecution, rights and legal remedies; the Implementing Rules of the Patent Law of the PRC and the Guidelines for Patent Examination, which provide detailed requirements and procedures on patent litigation proceedings.

The PRC is member country to some international treaties relating to patents and patent litigation such as WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention); Patent Cooperation Treaty 1970; and WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.

In the event of a conflict, the provision of the international treaty prevails over the national laws except those on which the PRC has announced reservation; and the law in force supersedes the regulations, rules, judicial interpretations and administrative interpretations. Judicial and administrative interpretations are of parallel legal force, but implemented by the courts and administrations respectively.

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3.2. Substantive law

All industrial products, as long as its appearance is a new design, could be protected by way of registered design in the PRC. An unregistered design is not protected under Chinese law.

To be granted for patent design, the design shall not belong to the existing design, no entity or individual has filed an application with the CNIPA for the same design before the application date and recorded it in the patent documents announced after the application date; the design shall be obviously different from the existing design or the combination of existing design features; the design should not conflict with the legal rights already obtained by others before the date of application.

To file an application for a patent for design, besides a written request, pictures or photographs of the design as well as a brief description of the design shall be submitted. The relevant pictures or photographs submitted by the applicant shall clearly show the design of the product.

Regarding designs created by employees, shareholders or directors in the course of performing a duty or by using the material and technical resources of an entity employer, the right to apply for a design patent registration belongs to the entity. After the application is approved, the entity shall be the patentee.

As for designs which are not created in the performance of the task of any entity, the right to apply for a design patent registration belongs to the inventor or designer. After the application is approved, the inventor or designer shall be the patentee.

For designs created by employees, shareholders or directors by using the material and technical resources of an entity employer, if the entity has entered into an agreement with the inventor or designer on the right to apply for a design patent registration and the ownership of the patent right, such agreement shall prevail.

If a design is completed jointly by two or more entities or individuals, or by an entity or individual entrusted by another unit or individual, unless otherwise agreed, the right to apply for a design patent registration and the ownership of the patent right shall belong to the entity or individual who completed or jointly completed the design.

The patent assignment agreement will be effective once it is signed by both parties, but the assignment shall take effect only after the assignment request is registered before the CNIPA.

To exploit others’ patent, an exploitation license contract should be signed with the patentee. The licensee has no right to allow any entity or individual other than those specified in the contract to exploit the patent.

The designer could waive their moral rights in the designs. The term of the patent right for design is 15 years, which shall be calculated from the application date of the design.

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3.3. Enforcement

The scope of protection of the patent right for design shall be subject to the design of the patented product shown in the pictures or photos. The brief description of the design and its major design features, the patentee's opinion statement in the invalidation procedure and the litigation procedure, etc. can be used to understand the scope of protection of the patent right for design.

The overall comparison principle is adopted. When determining the scope of protection of a design, comprehensive consideration shall be given to the complete design content composed of all design elements such as the shape, pattern and color displayed in the picture or photograph representing the design in the grant publication, and all design features displayed in each view in the picture or photograph shall be taken into account, you cannot consider only some design features and ignore others.

To establish design infringement, first of all, the alleged infringing product and the design product should belong to the same or similar types of products, and to determine whether the types of products are the same or similar, comparison should be made based on the function, purpose and use environment of the design product.

Meanwhile, to establish design infringement, the designs should be the same or similar, while it is not necessary for confusion or misunderstanding. Whether designs are the same or similar shall be judged according to the overall visual effect in the eyes of the general consumers with general knowledge and cognitive ability, rather than the observation ability of the general designer of the design product or the actual buyer of the product. And the design features determined by the product function shall not be considered when judging two designs are the same or similar.

A registered design patent can be enforced against a trademark, a registered design patent could be basis to oppose a trademark application, invalidate a trademark registration, and to invalidate a later registered design patent.

The common defenses available to an alleged infringer are non-infringement, that the design patent should be invalidated, prior use and prior art. Infringement proceedings must be brought within three years of the date on which a patentee knew or should have known of the infringement.

For the same set of acts, a design holder is not allowed to take action claiming design infringement and copyright infringement and/or unfair competition. The design holder is entitled to choose design infringement or copyright infringement or unfair competition claim.

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4 . Right of privacy, publicity and personal endorsement

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4.1. Sources of law

The right of publicity is not recognized by Chinese law. In practice, the similar rights should be the right of personal name, right to portrait, right of reputation, copyright, trademark, right of commercialization, and so on.

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4.2. Substantive law

The Anti-Unfair Competition Law of the PRC prohibits unauthorized use of enterprise names (including abbreviations, brand names, etc.), social organization names (including abbreviations, etc.), names (including pen names, stage names, translated names, etc.) that have certain influence on others by a business operator to mislead people into believing that it is another person's commodity or has a specific connection with another person.

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4.3. Enforcement

Pursuant to Trademark Law of the PRC, the application for trademark registration shall not prejudice the prior rights of others. And personal name, right to portrait, copyright, trademark, right of commercialization, etc. all could be a kind of prior right.

Therefore, for a person who is a celebrity or is of some distinction, they could protect their name right and right to portrait pursuant to Trademark Law of the PRC or Anti Unfair Competition Law of the PRC.

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5 . Product placement

There are no laws or regulations prohibiting product placement in the PRC. In practice, it is common to have product placement in TV drama or movies. Product placement is considered as a kind of advertisement which should be applied to Advertisement Law of the PRC.

According to Measures for the Administration of Radio and Television Advertising Broadcasting issued by the State Administration of Radio, Film and Television and amended in 2011, the following radio and television advertisements are prohibited:

  • advertisements published in the form of news reports;
  • advertising of tobacco products;
  • prescription drug advertising;
  • drugs, food, medical devices and medical advertisements for treating malignant tumors, liver diseases, sexually transmitted diseases or improving sexual function;
  • name analysis, travel analysis, fate test, making friends and chatting and other audio service advertisements;
  • dairy advertisements with the term "breast milk substitutes"; and
  • other advertisements prohibited from broadcasting by laws, administrative regulations and relevant provisions of the state.
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6 . Protection of corporate image and reputation

There is no law regarding right of publicity and/or privacy for legal entities or corporations. However, according to the Civil Code of the PRC promulgated in 2020, civil subjects (including legal entities and corporations) enjoy the right of reputation. No organization or individual may infringe upon another person's right of reputation by insulting or slandering.

In general, for the purposes of protecting the corporate image and reputation, it is allowed to include specific clauses in an agreement aimed at protecting the corporate image or reputation of one of the parties, for example, prohibition to sell the products to re-sellers whose image is below a certain defined standard, prohibition to sell below a certain price or to do so outside of specific time periods, prohibition to buy non original – but otherwise legitimate - spare parts and components.

There are no liquidated damages or stipulated fines clauses for breach by a part of any provisions protecting the reputation or corporate image of the other party permissible in the PRC.

However, the parties signing such agreements should avoid violating Articles 13 and 14 of the Anti-monopoly Law of the PRC, which prohibits competitive operators from concluding the following monopoly agreements: on fixing or changing commodity prices; limiting the production or sales quantity of commodities; splitting the sales market or raw material procurement market; restricting the purchase of new technologies and equipment or the development of new technologies and products; or boycott deal; and prohibits an operator and its trading counterparty from concluding the monopoly agreements on fixing the prices of commodities resold to a third party, or limiting the minimum prices for commodities resold to a third party.

EXPERT ANALYSIS

Preface

Nicolas Martin
Sheila Henderson

Chapters

Belgium

Moana Colaneri

Brazil

Luiz Edgard Montaury Pimenta
Marianna Furtado de Mendonça

Cyprus

George Tashev
Ioanna Martidi
Maria Hinni
Nasos Kafantaris

Czechia

Michael Feuerstein
Michal Havlík

France

Sophie Marc

Germany

Wiebke Baars

India

Dhruv Anand
Kavya Mammen
Pravin Anand
Sampurnaa Sanyal
Udita M Patro

Italy

Fabrizio Jacobacci

Japan

Koichi Nakatani

Netherlands

Herwin Roerdink
Nadine Reijnders - Wiersma
Tjeerd Overdijk

Russia

Anastasiia Kuznetsova
Igor Nevzorov
Polina Semina

South Korea

Dae Hyun Seo
Won Joong Kim

Spain

Carolina Montero
Eleonora Carrillo
Fernando Ortega
Ignacio Temiño
Jorge Oria
Rubén Canales

Taiwan

Crystal J Chen
Nick J.C. Lan

Turkey

Özlem Futman
Yasemin Aktas

United Kingdom

Rosie Burbidge

United States

Alan Behr
Tod M. Melgar
Yann Rim