11-6-2026
In this edition of our newsletter, we have compiled and addressed some of the most frequently asked questions from both professional and lay clients at this year’s Annual Meeting of the International Trademark Association.
1. Are there any newly revised provisions or updates to China’s Trademark Law?
Short answer: yes.
The latest draft of the Trademark Law was released in January 2026. The revised draft adopts a more pragmatic legislative tone, shifting from stringent restrictive measures to formalizing existing examination practices.
Key substantive updates include the removal of the one-year blocking period for expired, cancelled or invalidated prior marks; expanding protection for unregistered well-known marks against dissimilar goods and services; recognizing motion marks to be registrable; and shortening opposition period from three months to two months.
The latest Trademark Law draft also removes the previous drafted requirement of active submission of use evidence for registered trademarks every 5 years. Further, there is no ban on trademark re-filing.
2. From time to time, we receive non‑use cancellation actions targeting our peripheral goods. How should we address such cancellations initiated by third parties?
Short answer: run annual / bi-annual evidence collection exercise, and/or re-file trademarks every 2.5 / 3 years.
Present practices have already been made more stringent to require applicants to submit additional information. However, we still see this as a prevalent tactic by both good and bad faith filers. Due to bad faith non-use cancellation filers, we will need a valid chain of evidence for maintaining a registration. Regular use evidence collection exercises are vital, and we can help with timestamping of websites and online promotional materials. Scheduled notarial visits to key retail locations or outlets where goods are sold are also recommended.
At the same time, as re-filing is possible under the laws, a well-planned re-filing regime will be helpful in maintaining the integrity of your trademark portfolio. Taking into account the time needed for examination, re-filing at the interval of 2.5 to 3 years might be something to consider for core marks in core classes.
3. Are Gifts Considered Trademark Use?
Short answer: Yes, it is likely.
In Chinese trademark practice, the question of whether giveaways, free samples, or bundled items constitute trademark use has become increasingly significant. The decisive factor is commercial reality: whether the use performs the source‑identifying function of a trademark and whether the goods actually enter market circulation as part of a transaction. Courts and the CNIPA have consistently stressed that the mere fact an item is free or ancillary does not automatically exclude it from being considered as valid trademark use. We have had valid successful cases here.
First, trademark owners should carefully plan how their marks are used in connection with goods and services. Free samples, promotional gifts, and bundled items can constitute trademark use if they reach end consumers and perform the source‑identifying function of a mark. Therefore, businesses should ensure that such items are distributed in a way that clearly links them to the trademark and that they enter market circulation as part of commercial transactions.
Second, evidence preservation is critical. Owners should maintain comprehensive records of distribution, including VAT invoices, contracts, shipping documents, and consumer‑facing materials such as advertisements, online reviews, and screenshots of resale activity. These materials provide proof that goods have reached consumers and that the trademark has been used commercially.
Fully complying with the above rules and preparing complete evidence will be useful in maintaining the validity of trademark registrations in non-use proceedings.
4. Does OEM production for export qualify as trademark use?
Short answer: Yes.
Whether export-only OEM production constitutes valid trademark use is a frequently raised question, and the answer is affirmative under current practice. Such activities are recognized as legitimate trademark use. Of course, valid and complete chain of evidence remains necessary.
To successfully prove trademark use for export-only OEM business, right holders need to prepare a full set of supporting documents. OEM contracts; production-related materials like manufacturing orders; export credentials such as customs declarations and bills of lading; invoices; and samples of packaging, labels and product manuals showing the trademark are necessary.
5. CNIPA often raises objections for deceptive elements. What practical advice can we follow to prevent this situation?
Short answer: Pre-filing planning.
CNIPA is intensifying its crackdown on so‑called “tricky trademarks”. Applications containing parts which may be regarded as claims on quality, function, or origin, will likely be rejected, on the ground that they are deceptive.
In practice, we have successfully assisted clients in overcoming deceptiveness objections by incorporating tailored limitations into specifications—explicitly stating that the applied‑for goods or services possess the qualities implied by the marks. Although CNIPA traditionally only allows standardized descriptions in national applications, with carefully drafted limitation, the “non-standard” descriptions may still be accepted. These limitations prevent the objection based on deceptiveness.
For international registrations, applicants may amend specifications post‑filing to include these limitations. However, amendments are not permitted for national applications once submitted. It is therefore essential to have careful pre-filing planning.
6. May I confirm if the Copyright Protection Centre of China conducts substantive examination at present?
Short answer: No, but we should act as soon as practicable.
CPCC still primarily conducts only formality examinations, but with the use of AI, prior recorded identical / highly similar works may now be revealed, blocking the subsequent copyright recordal application.
This latest policy adjustment brings both advantages and drawbacks to the legitimate rights holders. For one thing, if your works are already registered in the CPCC’s database, this mechanism may effectively stop subsequent bad faith filers from seeking copyright recordal of your works. For another, if bad-faith applicants have secured prior recordals in advance, we do not have administrative route in cancelling those bad faith recordals, and court proceedings may be necessitated. We are indeed finding bad-faith copyright filers more prevalent and there is no way of ridding of these apart from going to court. Therefore, acting as soon as practicable remains the key.
7. Infringers are selling counterfeit products on standalone websites. Are there ways to have these infringing links taken down?
Short answer: Yes, infringing links on standalone websites can be taken down by filing complaints with domain name registrars or hosting service providers.
Under the Civil Code and relevant regulatory provisions in China, Chinese service providers, including domain name registrar and hosting service providers, are legally obliged to handle infringement complaints in compliance with statutory requirements. Otherwise, they may be held jointly liable for the infringing activities. This liability risk makes registrars and hosting providers generally willing to cooperate with rights holders.
The process will be similar to e-commerce platforms complaints. While procedures vary among operators, the key is to act quickly and strategically. Filing complaints promptly helps prevent further consumer confusion and limits the infringer’s ability to continue operations. At the same time, rights holders should consider whether to escalate enforcement through administrative complaints or civil litigation if the infringement is large‑scale or persistent.
8. What is the relevance of the Hong Kong Customs?
Short answer: Hong Kong is being used as a re-export hub for infringing products originated from Chinese Mainland.
Hong Kong, though a smaller market, plays a significant role as a re‑export hub for infringing products originating from Chinese mainland. Given that Hong Kong and Chinese Mainland remain as two separate jurisdictions from the perspective of IP rights protection, Customs recordal in Hong Kong adds additional protective layer.
There can be different reasons for infringers to use Hong Kong as a re-export hub. They may want another “origin” for the goods to be exported. We also have no foreign exchange control in Hong Kong.
Unlike in Chinese mainland, no bond fee is required. Instead, Hong Kong Customs relies on local representatives of the rights holders to authenticate products and testify in court. In the absence of a local presence, we can also help to act as the client’s examiners in Hong Kong to testify in courts.
Taken together, recordal in both jurisdictions create a comprehensive border defence strategy. Of course, we require Hong Kong registrations to do the Customs recordal in Hong Kong.
We hope that the above have addressed questions that you may have regarding IP right protection in Greater China. If you have further questions, please feel free to contact us.
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.
