3-3-2026
With the Chinese Year of the Horse just starting , we summarize 5 key takeaways in Chinese trademark practice from the cases we handled in the past year.
1. Overcoming non-distinctive refusal ground by fame and reputation
According to the current examination standard in China, a trademark consisting of only one or two letters in ordinary font, or Arabic numerals in ordinary form, is deemed to be non-registrable as it is regarded as lacking distinctiveness.
While it is always difficult in overcoming a non-distinctive refusal, it is not always a dead end.
Traditionally, the core argument will be to show acquired distinctiveness, which is often evidence centric. Substantive and quality use evidence will usually be required in establishing that through actual use, the mark serves the purpose of identifying a single origin of the goods or services. However, this may always be difficult as for most of the cases, the right owner seeks registration before the actual use in the Chinese market.
We list as an example a successful case we prosecuted. The subject mark is composed of common-style letters and numbers, and not surprisingly, it was initially rejected by the CNIPA due to the lack of distinctiveness. While we did not have extensive use evidence of the mark in China, as the mark was the name of the applicant, we made detailed submissions in introducing the applicant (which is a film production company) and its fame and reputation and business activities in China. For this case, we made detailed introduction of the films produced by the applicant and the awards obtained, and the performance at the box office, in support of the fame and reputation of the applicant in China. Also, we produced online search records using the subject mark to indicate that the subject mark was linked exclusively to the applicant. In addition, we made extensive research, and highlighted trademarks that were approved by the CNIPA under similar circumstances as a support, notwithstanding the case-by-case examination principle as adopted in China. We successfully convinced the CNIPA to waive the objection and the subject mark was approved for registration.
With careful selection of evidence and detailed submissions, we may still overcome such refusal ground even if there may not be use evidence in China that may directly show acquired distinctiveness.
2. Overcoming deceptive refusal ground by careful drafting of specifications
For marks with words suggesting ingredient/component/characteristic of the goods where the marks will be used, they may be rejected on the ground of deceptiveness, as the marks upon registrations can be used on goods without that ingredient/component/characteristic, and in such cases may mislead the public into believing that the goods supplied indeed have that ingredient/component/characteristic.
In other jurisdictions, there may be possibility of limiting the specifications upon encountering such refusal so as to remove the risk of having deceptive effect. However, in China, the specifications cannot be amended upon the passing of the formality checking, and in general, only standard terms will be accepted.
One possible way to overcome this issue may be to go for the route of international registrations designating China, where the right owner will have flexibility in drafting the specifications with limitations in ensuring that no misleading effect may be resulted.
However, international registrations do have their limitation that we cannot pick our own subclasses in filing, and non-standard items may be translated and classified into wrong subclasses which may undermine the protection scope of the trademark. China adopts subclassification system, that goods/services in one subclass may be considered as different than those in another subclass (even in the same class).
Our successful case here is that we assisted our clients in securing their national registrations in China. While in general, specifications containing non-standard terms may be rejected, we drafted the specifications by adding suitable limitations to the standard terms for the purpose of avoiding the deceptive refusal ground, and the clients’ applications eventually passed the formality checking and substantive examination without encountering such refusal.
As the specifications cannot be amended or limited after passing the formality checking, careful planning ahead and drafting of appropriate specifications at the time of filing will be a key to success in obtaining national registrations.
3. Cross class/subclass protection for marks with certain fame and reputation in China
While in general, we may need to petition for well-known status to succeed in opposition/invalidation against a similar mark in a dissimilar class/subclass, we have successful instances of challenging similar marks in dissimilar goods when the evidence was insufficient in establishing well-known status.
The evidential burden for petitioning for well-known status is substantive, but it does not necessarily mean evidence falling short of establishing well-known status will not be useful in opposition/invalidation cases. Through establishing of certain fame and reputation of the right owners’ marks in dissimilar goods/services by appropriate evidence, the CNIPA may agree with us that the right owners’ interest could be damaged or unfairly exploited by the registration of a similar mark even in a dissimilar class/subclass. Petitioning for well-known status is not the only route to succeed.
Key evidence will include dated invoices, advertisements, or social media posts evidencing use; and market surveys, press coverage, or industry awards demonstrating public recognition. Our tip is that even that the evidence in docket may not be substantive, we may still submit the same accompanying by detailed submission, and in parallel carrying out appropriate searches, for demonstrating the fame and reputation of the right owners in China, so as to enhance the chance of success.
4. Whether use of a mark on promotional gifts may be sufficient in maintaining registration in non-use cancellation proceedings
In China, a registered trademark is vulnerable to non-use cancellation after 3 years, and the burden of proof lies squarely on the trademark owner to demonstrate active use. While in general we need evidence of sales to show actual commercial use, it becomes tricky when there may only be ancillary use (like use in producing promotional gifts).
Strictly speaking, actual “sales” is required to maintain registrations. Photos showing the products, or sourcing records of the gifts, could not themselves satisfy the use standard.
That being said, we successfully assisted the clients in defending non-use cancellations in similar cases. One of the keys rests on how we can link the gifts to specific business transaction or marketing campaign. We submitted evidence in the core class, and supplemented with supporting record linking distribution of the gifts to the core business activities. We should also ensure clear marking of the "five elements" on the evidence submitted. These five elements are the trademark, the specific goods, the date of use, the location, and the identity of the user of the trademark (which may be the registrant or duly authorized person).
While the CNIPA may be skeptical of "gift" evidence, a robust chain of documentation that proves the items bearing the mark were distributed in a genuine commercial context to promote the business can be a viable defense against non-use cancellation.
5. Evidential burden in utilizing copyright in opposition and invalidation against squatters
It is always advisable to obtain and produce copyright recordal certificates, particularly those issued by the Copyright Protection Center of China, when copyright is to be relied upon in going against squatters’ prior marks. However, sometimes the obtaining of copyright recordal certificates may not be a straight forward exercise when there may be issue in relating to the author/creator of the work and/or the creation of the work. We have succeeded in persuading the China National Intellectual Property Administration (CNIPA) to recognize the prior copyright even in absence of such copyright recordal certificates.
Our recent cases confirmed that alternative evidence, which can form a robust chain of evidence showing ownership of copyright, may suffice in having the CNIPA to recognize the prior copyright in absence of a copyright recordal certificate.
What constitutes a robust evidence chain?
- Dated creation records: early drafts, design files, and communications in relation to the creation of the work.
- Evidence of publication: foreign trademark registration certificates, marketing materials, media reports, website snapshots, or product packaging showing the work.
- Proof of consistent commercial use: invoices, sales data, and advertising campaigns that demonstrate public recognition.
The key is for the creation record to be dated, with support of contemporaneous record showing that the right owner created or directed the creation of the work. Foreign trademark registration certificates could also support the ownership together with the aforesaid record. Copyright remains a useful tool in going against squatters’ bad faith filings/registrations in China, and submitting relevant and effective copyright evidence is crucial to our success in reclaiming trademark rights.
About Us
Vivien Chan & Co. is a full-service law practice with offices in Hong Kong (1985) and Beijing (1993). We are consistently recognized as a premier law firm for and in Greater China. With 40 years of doing business in Greater China, our Hong Kong and China teams have an in-depth understanding and knowledge of the legal culture and market dynamics.
Our long established licensed law offices in Greater China have allowed us to develop deep local roots and an integrated global perspective necessary to help domestic businesses and multinational companies alike seamlessly manage even the most complex local and cross border transactions.
We have advised on some of the most significant acquisitions, arbitrations, real estate projects and intellectual property enforcement to date. This is particularly evident from our leading position in areas such as intellectual property, tax, employment, mergers & acquisitions and dispute resolution. Our ability to collaborate across practices and borders with ease allows us to bring the right team to every transaction, regardless of location.
