同济大学：《中国知识产权保护》课程电子教案（课件讲稿）07 商标保护 Trademark Protection in China（1/2）

Contents 1.The Rules of Registration and First-to-File 2.Registerable Marks 3.Registration Procedure 4.How foreigner or foreign company file application in China

Contents • 1. The Rules of Registration and First-to-File • 2. Registerable Marks • 3．Registration Procedure • 4. How foreigner or foreign company file application in China

Part I 1.The Rules of Registration and First-to-File 1.1 National Laws International Agreements a)National Laws 1980:China's accession to the World Intellectual Property Organization ("WIPO")in 1980 -WIPO 1983:the first Trademark Law of the People's Republic of China came into force Implementing Regulations of the Trademark Law -first Trademark Law revised in Feb.1993 -first revision 2001:after China's entry into WTO it was revised again on October 27,2001in order to meet the requirements of the Trade-related Aspects of Intellectual Property Rights("TRIPS")-revision under TRIPS

Part I 1. The Rules of Registration and First-to-File 1.1 National Laws & International Agreements a) National Laws • 1980: China’s accession to the World Intellectual Property Organization (“WIPO”) in 1980 - WIPO • 1983: the first Trademark Law of the People’s Republic of China came into force & Implementing Regulations of the Trademark Law - first Trademark Law revised in Feb. 1993 - first revision • 2001: after China’s entry into WTO it was revised again on October 27, 2001 in order to meet the requirements of the Trade-related Aspects of Intellectual Property Rights (“TRIPS”)– revision under TRIPS

1.1 Laws,International Agreements and the Framework of Legal Protection b)International Agreements and the Framework of Legal Protection In addition to improving its national trademark legislation,China had also taken steps to bring its trademark protection laws in line with the international standards and practice. The agreements mainly includes: (1)Paris Convention, (2)Madrid Agreement (3)Nice Agreement

1.1 Laws, International Agreements and the Framework of Legal Protection b) International Agreements and the Framework of Legal Protection • In addition to improving its national trademark legislation, China had also taken steps to bring its trademark protection laws in line with the international standards and practice. • The agreements mainly includes: (1) Paris Convention, (2) Madrid Agreement & (3) Nice Agreement

International Agreements and the Framework of Legal Protection (1)Paris Convention for the Protection of Industrial Property in 1984: Before being a member of WTO,China acceded to the Paris Convention for the Protection of Industrial Property in1984 and became its member in 1985. (2)Madrid Agreement Concerning the International Registration of Marks in 1989 China became a party to the Madrid Agreement Concerning the International Registration of Marks in 1989 and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in 1995

International Agreements and the Framework of Legal Protection (1) Paris Convention for the Protection of Industrial Property in 1984: • Before being a member of WTO, China acceded to the Paris Convention for the Protection of Industrial Property in1984 and became its member in 1985. (2) Madrid Agreement Concerning the International Registration of Marks in 1989 China became a party to the Madrid Agreement Concerning the International Registration of Marks in 1989 and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in 1995

International Agreements and the Framework of Legal Protection ·The Madrid Agreement The Madrid Agreement provides a system for filing trademarks in its member states such that any individual or legal entity with a registered trademark in a member state may file for protection of that trademark in the other member states through a single application (an international registration)at the Central Registration Bureau of WIPO.The system for international registration under the Madrid Protocol is similar to that under the Madrid Agreement,with a few exceptions

International Agreements and the Framework of Legal Protection • The Madrid Agreement • The Madrid Agreement provides a system for filing trademarks in its member states such that any individual or legal entity with a registered trademark in a member state may file for protection of that trademark in the other member states through a single application (an international registration) at the Central Registration Bureau of WIPO. The system for international registration under the Madrid Protocol is similar to that under the Madrid Agreement, with a few exceptions

International Agreements and the Framework of Legal Protection (3)Nice Agreement Moreover,China became a party to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks in 1994 The Nice Agreement requires signatory countries to use a single system for classifying goods and services for the purposes of trademark registration

International Agreements and the Framework of Legal Protection (3) Nice Agreement • Moreover, China became a party to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks in 1994 • The Nice Agreement requires signatory countries to use a single system for classifying goods and services for the purposes of trademark registration

1.2 Summary:Registration Rules The above-mentioned national laws and international laws established and ensured the most important rules related to trademark protection: the registration rule and the first-to-file rule. The registration rule mainly means that (1)only the registered trademark is protected in China(territorial protection principle )and (2)one registration is valid for 10 years starting from the Date of Registration and can be renewed indefinitely,each time lasting for 10 years

1.2 Summary：Registration Rules • The above-mentioned national laws and international laws established and ensured the most important rules related to trademark protection: the registration rule and the first-to-file rule. • The registration rule mainly means that (1) only the registered trademark is protected in China (territorial protection principle )and (2) one registration is valid for 10 years starting from the Date of Registration and can be renewed indefinitely, each time lasting for 10 years

1.3 Registration with pre-empting effect Registration,First-to-File doctrine vs.Prior Use 。 According to the First-to-File doctrine,the first applicant to file an application for Registration of a Trademark will pre- empt all later applicants.This further implies that the prior use of an unregistered trademark is generally irrelevant, unless such unregistered trademark is a so-called "well- known”trademark.(case“张小泉剪刀”) ● In addition,where two applications for the identical or similar marks on identical or similar goods are filed on the same day,the preliminary approval will be given to the mark which is first used in commerce. Moreover,this means the one who registers a trademark legally has the right to forbid others from using of the same or similar unregistered trademark in China

1.3 Registration with pre-empting effect • Registration, First-to-File doctrine vs. Prior Use • According to the First-to-File doctrine, the first applicant to file an application for Registration of a Trademark will pre￾empt all later applicants. This further implies that the prior use of an unregistered trademark is generally irrelevant, unless such unregistered trademark is a so-called “well￾known” trademark. (case “张小泉剪刀”) • In addition, where two applications for the identical or similar marks on identical or similar goods are filed on the same day, the preliminary approval will be given to the mark which is first used in commerce. • Moreover, this means the one who registers a trademark legally has the right to forbid others from using of the same or similar unregistered trademark in China

1.4 Record of Registration in China As a result of such rules and due to China's rapid economic growth,China has been experiencing the largest registration volume in the world. Till to the end of year 2004,it was reported that the accumulated registration trademarks achieved 2,200,000.increasing 。in2008:700,000 filing in2008

1.4 Record of Registration in China • As a result of such rules and due to China’s rapid economic growth, China has been experiencing the largest registration volume in the world. • Till to the end of year 2004, it was reported that the accumulated registration trademarks achieved 2,200,000. increasing • in 2008: 700,000 filing in 2008

Cases ·意大利费列罗公司Ferrero Rocher vs.蒙特 莎（张家港）食品有限公司 Ferrero Rocher had not its Chinese character and had allowed infringing use by a Chinese dairy for well over ten years Ferrero Rocher lost the first trial but won on appeal,retrial by Supreme Court in 2008 unfair competition

Cases • 意大利费列罗公司Ferrero Rocher vs. 蒙特 莎（张家港）食品有限公司 • Ferrero Rocher had not its Chinese character and had allowed infringing use by a Chinese dairy for well over ten years • Ferrero Rocher lost the first trial but won on appeal, retrial by Supreme Court in 2008 – unfair competition