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Trademark Laws and Regulations |
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- Madrid Agreement on the International Registration of
Mark |
MADRID
AGREEMENT CONCERNING
THE INTERNATIONAL REGISTRATION OF MARKS
of
April 14, 1891, as revised at Brussels on
December 14, 1900, at Washington on June 2, 1911,
at The Hague on November 6, 1925, at London on
June 2, 1934,
at Nice on June 15, 1957, and at Stockholm on
July 14, 1967,
and as amended on September 28, 1979
TABLE
OF CONTENTS
Article 1:
Establishment of a Special Union. Filing of Marks at International Bureau.
Definition of Country of Origin
Article 2:
Reference to Article 3 of the Paris Convention (Same Treatment for Certain
Categories of Persons as for Nationals of Countries of the Union)
Article 3:
Contents of Application for International Registration
Article 3bis:
"Territorial Limitation"
Article 3ter:
Request for "Territorial Extension"
Article 4:
Effects of International Registration
Article 4bis:
Substitution of International Registration for Earlier National Registrations
Article 5:
Refusal by National Offices
Article 5bis:
Documentary Evidence of Legitimacy of Use of Certain Elements of Mark
Article 5ter:
Copies of Entries in International Register. Searches for Anticipation.
Extracts from International Register
Article 6:
Period of Validity of International Registration. Independence of International
Registration. Termination of Protection in Country of Origin
Article 7:
Renewal of International Registration
Article 8:
National Fee. International Fee. Division of Excess Receipts, Supplementary
Fees, and Complementary Fees
Article 8bis:
Renunciation in Respect of One or More Countries
Article 9:
Changes in National Registers also Affecting International Registration.
Reduction of List of Goods and Services Mentioned in International
Registration. Additions to that List. Substitutions in that List
Article 9bis:
Transfer of International Mark Entailing Change in Country of Proprietor
Article 9ter:
Assignment of International Mark for Part Only of Registered Goods or Services
or for Certain Contracting Countries. Reference to Article 6quater
of Paris Convention (Assignment of Mark)
Article 9quater:
Common Office for Several Contracting Countries. Request by Several Contracting
Countries to be Treated as a Single Country
Article 10:
Assembly of the Special Union
Article 11:
International Bureau
Article 12:
Finances
Article 13:
Amendment of Articles 10 to 13
Article 14:
Ratification and Accession. Entry into Force. Accession to Earlier Acts. Reference
to Article 24 of Paris Convention (Territories)
Article 15:
Denunciation
Article 16:
Application of Earlier Acts
Article 17:
Signature, Languages, Depository Functions
Article 18:
Transitional Provisions
Article
1
[Establishment of a Special Union. Filing of Marks at International Bureau.
Definition of Country of Origin]1
(1)
The countries to which this Agreement applies constitute a Special Union for
the International registration of marks.
(2)
Nationals of any of the contracting countries may, in all the other countries
party to this Agreement, secure protection for their marks applicable to goods
or services, registered in the country of origin, by filing the said marks at
the International Bureau of Intellectual Property (hereinafter designated as
"the International Bureau") referred to in the Convention
establishing the World Intellectual Property Organization (hereinafter
designated as "the Organization"), through the intermediary of the
Office of the said country of origin.
(3)
Shall be considered the country of origin the country of the Special Union
where the applicant has a real and effective industrial or commercial
establishment; if he has no such establishment in a country of the Special
Union, the country of the Special Union where he has his domicile; if he has no
domicile within the Special Union but is a national of a country of the Special
Union, the country of which he is a national.
Article
2
[Reference to Article 3 of Paris Convention (Same Treatment for
Certain Categories of Persons as for Nationals of Countries of the Union)]
Nationals
of countries not having acceded to this Agreement who, within the territory of
the Special Union constituted by the said Agreement, satisfy the conditions
specified in Article 3 of the Paris Convention for the Protection of
Industrial Property shall be treated in the same manner as nationals of the
contracting countries.
Article
3
[Contents of Application for International Registration]
(1)
Every application for international registration must be presented on the form
prescribed by the Regulations; the Office of the country of origin of the mark
shall certify that the particulars appearing in such application correspond to
the particulars in the national register, and shall mention the dates and
numbers of the filing and registration of the mark in the country of origin and
also the date of the application for international registration.
(2)
The applicant must indicate the goods or services in respect of which
protection of the mark is claimed and also, if possible, the corresponding
class or classes according to the classification established by the Nice
Agreement concerning the International Classification of Goods and Services for
the Purposes of the Registration of Marks. If the applicant does not give such
indication, the International Bureau shall classify the goods or services in
the appropriate classes of the said classification. The indication of classes
given by the applicant shall be subject to control by the International Bureau,
which shall exercise the said control in association with the national Office.
In the event of disagreement between the national Office and the International
Bureau, the opinion of the latter shall prevail.
(3)
If the applicant claims color as a distinctive feature of his mark, he shall be
required:
1.
to state the fact, and to file with his application a notice specifying the
color or the combination of colors claimed;
2.
to append to his application copies in color of the said mark, which shall be
attached to the notification given by the International Bureau. The number of
such copies shall be fixed by the Regulations.
(4)
The International Bureau shall register immediately the marks filed in
accordance with Article 1. The registration shall bear the
date of the application for international registration in the country of
origin, provided that the application has been received by the International
Bureau within a period of two months from that date. If the application has not
been received within that period, the International Bureau shall record it as
at the date on which it received the said application. The International Bureau
shall notify such registration without delay to the Offices concerned.
Registered marks shall be published in a periodical journal issued by the
International Bureau, on the basis of the particulars contained in the
application for registration. In the case of marks comprising a figurative
element or a special form of writing, the Regulations shall determine whether a
printing block must be supplied by the applicant.
(5)
With a view to the publicity to be given in the contracting countries to
registered marks, each Office shall receive from the International Bureau a
number of copies of the said publication free of charge and a number of copies
at a reduced price, in proportion to the number of units mentioned in
Article 16(4)(a) of the Paris Convention for the Protection of Industrial
Property, under the conditions fixed by the Regulations. Such publicity shall
be deemed in all the contracting countries to be sufficient, and no other
publicity may be required of the applicant.
Article
3bis
["Territorial Limitation"]
(1)
Any contracting country may, at any time, notify the Director General of the
Organization (hereinafter designated as "the Director General") in
writing that the protection resulting from the international registration shall
extend to that country only at the express request of the proprietor of the
mark.
(2)
Such notification shall not take effect until six months after the date of the
communication thereof by the Director General to the other contracting
countries.
Article
3ter
[Request for "Territorial Extension"]
(1)
Any request for extension of the protection resulting from the international
registration to a country which has availed itself of the right provided for in
Article 3bis
must be specially mentioned in the application referred to in Article 3(1).
(2)
Any request for territorial extension made subsequently to the international
registration must be presented through the intermediary of the Office of the
country of origin on a form prescribed by the Regulations. It shall be
immediately registered by the International Bureau, which shall notify it
without delay to the Office or Offices concerned. It shall be published in the
periodical journal issued by the International Bureau. Such territorial
extension shall be effective from the date on which it has been recorded in the
International Register; it shall cease to be valid on the expiration of the
international registration of the mark to which it relates.
Article
4
[Effects of International Registration]
(1)
From the date of the registration so effected at the International Bureau in
accordance with the provisions of Articles 3
and 3ter,
the protection of the mark in each of the contracting countries concerned shall
be the same as if the mark had been filed therein direct. The indication of
classes of goods or services provided for in Article 3
shall not bind the contracting countries with regard to the determination of
the scope of the protection of the mark.
(2)
Every mark which has been the subject of an international registration shall
enjoy the right of priority provided for by Article 4 of the Paris
Convention for the Protection of Industrial Property, without requiring
compliance with the formalities prescribed in Section D of that Article.
Article
4bis
[Substitution of International Registration for Earlier National Registrations]
(1)
When a mark already filed in one or more of the contracting countries is later
registered by the International Bureau in the name of the same proprietor or
his successor in title, the international registration shall be deemed to have
replaced the earlier national registrations, without prejudice to any rights
acquired by reason of such earlier registrations.
(2)
The national Office shall, upon request, be required to take note in its
registers of the international registration.
Article
5
[Refusal by National Offices]
(1)
In countries where the legislation so authorizes, Offices notified by the
International Bureau of the registration of a mark or of a request for
extension of protection made in accordance with Article 3ter
shall have the right to declare that protection cannot be granted to such mark
in their territory. Any such refusal can be based only on the grounds which
would apply, under the Paris Convention for the Protection of Industrial
Property, in the case of a mark filed for national registration. However,
protection may not be refused, even partially, by reason only that national
legislation would not permit registration except in a limited number of classes
or for a limited number of goods or services.
(2)
Offices wishing to exercise such right must give notice of their refusal to the
International Bureau, together with a statement of all grounds, within the period
prescribed by their domestic law and, at the latest, before the expiration of
one year from the date of the international registration of the mark or of the
request for extension of protection made in accordance with Article 3ter.
(3)
The International Bureau shall, without delay, transmit to the Office of the
country of origin and to the proprietor of the mark, or to his agent if an
agent has been mentioned to the Bureau by the said Office, one of the copies of
the declaration of refusal so notified. The interested party shall have the
same remedies as if the mark had been filed by him direct in the country where
protection is refused.
(4)
The grounds for refusing a mark shall be communicated by the International
Bureau to any interested party who may so request.
(5)
Offices which, within the aforesaid maximum period of one year, have not
communicated to the International Bureau any provisional or final decision of
refusal with regard to the registration of a mark or a request for extension of
protection shall lose the benefit of the right provided for in paragraph (1)
of this Article with respect to the mark in question.
(6)
Invalidation of an international mark may not be pronounced by the competent
authorities without the proprietor of the mark having, in good time, been
afforded the opportunity of defending his rights. Invalidation shall be
notified to the International Bureau.
Article
5bis
[Documentary Evidence of Legitimacy of Use of Certain Elements of Mark]
Documentary
evidence of the legitimacy of the use of certain elements incorporated in a
mark, such as armorial bearings, escutcheons, portraits, honorary distinctions,
titles, trade names, names of persons other than the name of the applicant, or
other like inscriptions, which might be required by the Offices of the
contracting countries shall be exempt from any legalization or certification
other than that of the Office of the country of origin.
Article
5ter
[Copies of Entries in International Register. Searches for Anticipation.
Extracts from International Register]
(1)
The International Bureau shall issue to any person applying therefor, subject
to a fee fixed by the Regulations, a copy of the entries in the Register
relating to a specific mark.
(2)
The International Bureau may also, upon payment, undertake searches for
anticipation among international marks.
(3)
Extracts from the International Register requested with a view to their
production in one of the contracting countries shall be exempt from all
legalization.
Article
6
[Period of Validity of International Registration. Independence of
International Registration. Termination of Protection in Country of Origin]
(1)
Registration of a mark at the International Bureau is effected for twenty
years, with the possibility of renewal under the conditions specified in Article 7.
(2)
Upon expiration of a period of five years from the date of the international
registration, such registration shall become independent of the national mark
registered earlier in the country of origin, subject to the following
provisions.
(3)
The protection resulting from the international registration, whether or not it
has been the subject of a transfer, may no longer be invoked, in whole or in
part, if, within five years from the date of the international registration,
the national mark, registered earlier in the country of origin in accordance
with Article 1,
no longer enjoys, in whole or in part, legal protection in that country. This
provision shall also apply when legal protection has later ceased as the result
of an action begun before the expiration of the period of five years.
(4)
In the case of voluntary or ex officio cancellation, the Office of the country
of origin shall request the cancellation of the mark at the International
Bureau, and the latter shall effect the cancellation. In the case of judicial
action, the said Office shall send to the International Bureau, ex officio or
at the request of the plaintiff, a copy of the complaint or any other
documentary evidence that an action has begun, and also of the final decision
of the court; the Bureau shall enter notice thereof in the International
Register.
Article
7
[Renewal of International Registration]
(1)
Any registration may be renewed for a period of twenty years from the
expiration of the preceding period, by payment only of the basic fee and, where
necessary, of the supplementary and complementary fees provided for in Article 8(2).
(2)
Renewal may not include any change in relation to the previous registration in
its latest form.
(3)
The first renewal effected under the provisions of the Nice Act of
June 15, 1957, or of this Act, shall include an indication of the
classes of the International Classification to which the registration relates.
(4)
Six months before the expiration of the term of protection, the International
Bureau shall, by sending an unofficial notice, remind the proprietor of the
mark and his agent of the exact date of expiration.
(5)
Subject to the payment of a surcharge fixed by the Regulations, a period of
grace of six months shall be granted for renewal of the international
registration.
Article
8
[National Fee. International Fee. Division of Excess Receipts, Supplementary
Fees, and Complementary Fees]
(1)
The Office of the country of origin may fix, at its own discretion, and
collect, for its own benefit, a national fee which it may require from the
proprietor of the mark in respect of which international registration or
renewal is applied for.
(2)
Registration of a mark at the International Bureau shall be subject to the
advance payment of an international fee which shall include:
(a) a basic fee;
(b) a supplementary fee for each class of the International
Classification, beyond three, into which the goods or services to which the
mark is applied will fall;
(c) a complementary fee for any request for extension of protection
under A3Article 3ter.
(3)
However, the supplementary fee specified in paragraph (2)(b)
may, without prejudice to the date of registration, be paid within a period
fixed by the Regulations if the number of classes of goods or services has been
fixed or disputed by the International Bureau. If, upon expiration of the said
period, the supplementary fee has not been paid or the list of goods or
services has not been reduced to the required extent by the applicant, the
application for international registration shall be deemed to have been
abandoned.
(4)
The annual returns from the various receipts from international registration,
with the exception of those provided for under (b)
and (c) of
paragraph (2), shall he divided equally among the countries
party to this Act by the International Bureau, after deduction of the expenses
and charges necessitated by the implementation of the said Act. If, at the time
this Act enters into force, a country has not yet ratified or acceded to the
said Act, it shall be entitled, until the date on which its ratification or
accession becomes effective, to a share of the excess receipts calculated on
the basis of that earlier Act which is applicable to it.
(5)
The amounts derived from the supplementary fees provided for in paragraph (2)(b)
shall be divided at the expiration of each year among the countries party to
this Act or to the Nice Act of June 15, 1957, in proportion to the
number of marks for which protection has been applied for in each of them
during that year, this number being multiplied, in the case of countries which
make a preliminary examination, by a coefficient which shall be determined by
the Regulations. If, at the time this Act enters into force, a country has not
yet ratified or acceded to the said Act, it shall be entitled, until the date
on which its ratification or accession becomes effective, to a share of the
amounts calculated on the basis of the Nice Act.
(6)
The amounts derived from the complementary fees provided for in paragraph (2)(c)
shall be divided according to the requirements of paragraph (5)
among the countries availing themselves of the right provided for in Article 3bis.
If, at the time this Act enters into force, a country has not yet ratified or
acceded to the said Act, it shall be entitled, until the date on which its
ratification or accession becomes effective, to a share of the amounts
calculated on the basis of the Nice Act.
Article
8bis
[Renunciation in Respect of One or More Countries]
The
person in whose name the international registration stands may at any time
renounce protection in one or more of the contracting countries by means of a
declaration filed with the Office of his own country, for communication to the
International Bureau, which shall notify accordingly the countries in respect
of which renunciation has been made. Renunciation shall not be subject to any
fee.
Article
9
[Changes in National Registers also Affecting International Registration.
Reduction of List of Goods and Services Mentioned in International
Registration. Additions to that List. Substitutions in that List]
(1)
The Office of the country of the person in whose name the international
registration stands shall likewise notify the International Bureau of all
annulments, cancellations, renunciations, transfers, and other changes made in
the entry of the mark in the national register, if such changes also affect the
international registration.
(2)
The Bureau shall record those changes in the International Register, shall
notify them in turn to the Offices of the contracting countries, and shall
publish them in its journal.
(3)
A similar procedure shall be followed when the person in whose name the
international registration stands requests a reduction of the list of goods or
services to which the registration applies.
(4)
Such transactions may be subject to a fee, which shall be fixed by the
Regulations.
(5)
The subsequent addition of new goods or services to the said list can be
obtained only by filing a new application as prescribed in Article 3.
(6)
The substitution of one of the goods or services for another shall be treated
as an addition.
Article
9bis
[Transfer of International Mark Entailing Change in Country of Proprietor]
(1)
When a mark registered in the International Register is transferred to a person
established in a contracting country other than the country of the person in
whose name the international registration stands, the transfer shall be
notified to the International Bureau by the Office of the latter country. The
International Bureau shall record the transfer, shall notify the other Offices
thereof, and shall publish it in its journal. If the transfer has been effected
before the expiration of a period of five years from the international
registration, the International Bureau shall seek the consent of the Office of
the country of the new proprietor, and shall publish, if possible, the date and
registration number of the mark in the country of the new proprietor.
(2)
No transfer of a mark registered in the International Register for the benefit
of a person who is not entitled to file an international mark shall be
recorded.
(3)
When it has not been possible to record a transfer in the International
Register, either because the country of the new proprietor has refused its
consent or because the said transfer has been made for the benefit of a person
who is not entitled to apply for international registration, the Office of the
country of the former proprietor shall have the right to demand that the
International Bureau cancel the mark in its Register.
Article
9ter
[Assignment of International Mark for Part Only of Registered Goods or Services
or for Certain Contracting Countries. Reference to Article 6quater of
Paris Convention (Assignment of Mark)]
(1)
If the assignment of an international mark for part only of the registered
goods or services is notified to the International Bureau, the Bureau shall
record it in its Register. Each of the contracting countries shall have the
right to refuse to recognize the validity of such assignment if the goods or
services included in the part so assigned are similar to those in respect of
which the mark remains registered for the benefit of the assignor.
(2)
The International Bureau shall likewise record the assignment of an
international mark in respect of one or several of the contracting countries
only.
(3)
If, in the above cases, a change occurs in the country of the proprietor, the
Office of the country to which the new proprietor belongs shall, if the
international mark has been transferred before the expiration of a period of
five years from the international registration, give its consent as required by
Article 9bis.
(4)
The provisions of the foregoing paragraphs shall apply subject to Article
6quater of the Paris Convention for the Protection of Industrial Property.
Article
9quater
[Common Office for Several Contracting Countries. Request by Several
Contracting Countries to be Treated as a Single Country]
(1)
If several countries of the Special Union agree to effect the unification of
their domestic legislation's on marks, they may notify the Director General:
(a) that a common Office shall be substituted for the national Office
of each of them, and
(b) that the whole of their respective territories shall be deemed to
be a single country for the purposes of the application of all or part of the
provisions preceding this Article.
(2)
Such notification shall not take effect until six months after the date of the
communication thereof by the Director General to the other contracting
countries.
Article
10
[Assembly of the Special Union]
(1)
(a) The Special Union shall have an Assembly consisting of those
countries which have ratified or acceded to this Act.
(b) The Government of each country shall be represented by one
delegate, who may be assisted by alternate delegates, advisors, and experts.
(c) The expenses of each delegation shall be borne by the Government
which has appointed it, except for the travel expenses and the subsistence
allowance of one delegate for each member country, which shall be paid from the
funds of the Special Union.
(2)
(a) The Assembly shall:
(i)
deal with all matters concerning the maintenance and development of the Special
Union and the implementation of this Agreement;
(ii)
give directions to the International Bureau concerning the preparation for
conferences of revision, due account being taken of any comments made by those
countries of the Special Union which have not ratified or acceded to this Act;
(iii)
modify the Regulations, including the fixation of the amounts of the fees
referred to in Article 8(2) and other fees relating to
international registration;
(iv)
review and approve the reports and activities of the Director General
concerning the Special Union, and give him all necessary instructions
concerning matters within the competence of the Special Union;
(v)
determine the program and adopt the biennal budget of the Special Union, and
approve its final accounts;
(vi)
adopt the financial regulations of the Special Union;
(vii)
establish such committees of experts and working groups as it may deem
necessary to achieve the objectives of the Special Union;
(viii)
determine which countries not members of the Special Union and which
intergovernmental and international non-governmental organizations shall be
admitted to its meetings as observers;
(ix)
adopt amendments to Articles 10 to 13;
(x)
take any other appropriate action designed to further the objectives of the
Special Union;
(xi)
perform such other functions as are appropriate under this Agreement.
(2)
(b) With respect to matters which are of interest also to other
Unions administered by the Organization, the Assembly shall make its decisions
after having heard the advice of the Coordination Committee of the
Organization.
(3)
(a) Each country member of the Assembly shall have one vote.
(b) One-half of the countries members of the Assembly shall
constitute a quorum.
(c) Notwithstanding the provisions of subparagraph (b),
if, in any session, the number of countries represented is less than one-half
but equal to or more than one-third of the countries members of the Assembly,
the Assembly may make decisions but, with the exception of decisions concerning
its own procedure, all such decisions shall take effect only if the conditions
set forth hereinafter are fulfilled. The International Bureau shall communicate
the said decisions to the countries members of the Assembly which were not
represented and shall invite them to express in writing their vote or
abstention within a period of three months from the date of the communication.
If, at the expiration of this period, the number of countries having thus
expressed their vote or abstention attains the number of countries which was
lacking for attaining the quorum in the session itself, such decisions shall
take effect provided that at the same time the required majority still obtains.
(d) Subject to the provisions of Article 13(2),
the decisions of the Assembly shall require two-thirds of the votes cast.
(e) Abstentions shall not be considered as votes.
(f) A delegate may represent, and vote in the name of, one country
only.
(g) Countries of the Special Union not members of the Assembly shall
be admitted to the meetings of the latter as observers.
(4)
(a) The Assembly shall meet once in every second calendar year in
ordinary session upon convocation by the Director General and, in the absence
of exceptional circumstances, during the same period and at the same place as
the General Assembly of the Organization.
(b) The Assembly shall meet in extraordinary session upon convocation
by the Director General, at the request of one-fourth of the countries members
of the Assembly.
(c) The agenda of each session shall be prepared by the Director
General.
(5)
The Assembly shall adopt its own rules of procedure.
Article
11
[International Bureau]
(1)
(a) International registration and related duties, as well as all
other administrative tasks concerning the Special Union, shall be performed by
the International Bureau.
(b) In particular, the International Bureau shall prepare the
meetings and provide the secretariat of the Assembly and of such committees of
experts and working groups as may have been established by the Assembly.
(c) The Director General shall be the chief executive of the Special
Union and shall represent the Special Union.
(2)
The Director General and any staff member designated by him shall participate,
without the right to vote, in all meetings of the Assembly and of such
committees of experts or working groups as may have been established by the
Assembly. The Director General, or a staff member designated by him, shall be
ex officio secretary of those bodies.
(3)
(a) The International Bureau shall, in accordance with the directions
of the Assembly, make the preparations for the conferences of revision of the
provisions of the Agreement other than Articles 10
to 13.
(b) The International Bureau may consult with intergovernmental and
international non-governmental organizations concerning preparations for
conferences of revision.
(c) The Director General and persons designated by him shall take
part, without the right to vote, in the discussions at those conferences.
(4)
The International Bureau shall carry out any other tasks assigned to it.
Article
12
[Finances]
(1)
(a) The Special Union shall have a budget.
(b) The budget of the Special Union shall include the income and
expenses proper to the Special Union, its contribution to the budget of
expenses common to the Unions, and, where applicable, the sum made available to
the budget of the Conference of the Organization.
(c) Expenses not attributable exclusively to the Special Union but
also to one or more other Unions administered by the Organization shall be
considered as expenses common to the Unions. The share of the Special Union in
such common expenses shall be in proportion to the interest the Special Union
has in them.
(2)
The budget of the Special Union shall be established with due regard to the
requirements of coordination with the budgets of the other Unions administered
by the Organization.
(3)
The budget of the Special Union shall be financed from the following sources:
(i)
international registration fees and other fees and charges due for other
services rendered by the International Bureau in relation to the Special Union;
(ii)
sale of, or royalties on, the publications of the International Bureau
concerning the Special Union;
(iii)
gifts, bequests, and subventions;
(iv)
rents, interests, and other miscellaneous income.
(4)
(a) The amounts of the fees referred to in Article 8(2)
and other fees relating to international registration shall be fixed by the
Assembly on the proposal of the Director General.
(b) The amounts of such fees shall be so fixed that the revenues of
the Special Union from fees, other than the supplementary and complementary
fees referred to in Article 8(2)(b) and (c),
and other sources shall be at least sufficient to cover the expenses of the
International Bureau concerning the Special Union.
(c) If the budget is not adopted before the beginning of a new
financial period, it shall be at the same level as the budget of the previous
year, as provided in the financial regulations.
(5)
Subject to the provisions of paragraph (4)(a), the amount of fees
and charges due for other services rendered by the International Bureau in
relation to the Special Union shall be established, and shall be reported to
the Assembly, by the Director General.
(6)
(a) The Special Union shall have a working capital fund which shall
be constituted by a single payment made by each country of the Special Union.
If the fund becomes insufficient, the Assembly shall decide to increase it.
(b) The amount of the initial payment of each country to the said
fund or of its participation in the increase thereof shall be a proportion of
the contribution of that country as a member of the Paris Union for the
Protection of Industrial Property to the budget of the said Union for the year
in which the fund is established or the decision to increase it is made.
(c) The proportion and the terms of payment shall be fixed by the
Assembly on the proposal of the Director General and after it has beard the
advice of the Coordination Committee of the Organization.
(d) As long as the Assembly authorizes the use of the reserve fund of
the Special Union as a working capital fund, the Assembly may suspend the
application of the provisions of subparagraphs (a),
(b),
and (c).
(7)
(a) In the headquarters agreement concluded with the country on the
territory of which the Organization has its headquarters, it shall be provided
that, whenever the working capital fund is insufficient, such country shall
grant advances. The amount of those advances and the conditions on which they
are granted shall be the subject of separate agreements, in each case, between
such country and the Organization.
(b) The country referred to in subparagraph (a)
and the Organization shall each have the right to denounce the obligation to
grant advances, by written notification. Denunciation shall take effect three
years after the end of the year in which it has been notified.
(8)
The auditing of the accounts shall be effected by one or more of the countries
of the Special Union or by external auditors, as provided in the financial
regulations. They shall be designated, with their agreement, by the Assembly.
Article
13
[Amendment of Articles 10 to 13]
(1)
Proposals for the amendment of Articles 10,
11,
12,
and the present Article, may be initiated by any country member of the
Assembly, or by the Director General. Such proposals shall be communicated by
the Director General to the member countries of the Assembly at least six
months in advance of their consideration by the Assembly.
(2)
Amendments to the Articles referred to in paragraph (1)
shall be adopted by the Assembly. Adoption shall require three-fourths of the
votes cast, provided that any amendment to Article 10,
and to the present paragraph, shall require four-fifths of the votes cast.
(3)
Any amendment to the Articles referred to in paragraph (1)
shall enter into force one month after written notifications of acceptance,
effected in accordance with their respective constitutional processes, have
been received by the Director General from three-fourths of the countries
members of the Assembly at the time it adopted the amendment. Any amendment to
the said Articles thus accepted shall bind all the countries which are members
of the Assembly at the time the amendment enters into force, or which become
members thereof at a subsequent date.
Article
14
[Ratification and Accession. Entry into Force. Accession to Earlier Acts.
Reference to Article 24 of Paris Convention (Territories)]
(1)
Any country of the Special Union which has signed this Act may ratify it, and,
if it has not signed it, may accede to it.
(2)
(a) Any country outside the Special Union which is party to the Paris
Convention for the Protection of Industrial Property may accede to this Act and
thereby become a member of the Special Union.
(b) As soon as the International Bureau is informed that such a
country has acceded to this Act, it shall address to the Office of that
country, in accordance with Article 3, a collective notification of the
marks which, at that time, enjoy international protection.
(c) Such notification shall, of itself, ensure to the said marks the
benefits of the foregoing provisions in the territory of the said country, and
shall mark the commencement of the period of one year during which the Office
concerned may make the declaration provided for in Article 5.
(d) However, any such country may, in acceding to this Act, declare
that, except in the case of international marks which have already been the
subject in that country of an earlier identical national registration still in
force, and which shall be immediately recognized upon the request of the
interested parties, application of this Act shall be limited to marks
registered from the date on which its accession enters into force.
(e) Such declaration shall dispense the International Bureau from making
the collective notification referred to above. The International Bureau shall
notify only those marks in respect of which it receives, within a period of one
year from the accession of the new country, a request, with the necessary
particulars, to take advantage of the exception provided for in subparagraph (d).
(f) The International Bureau shall not make the collective
notification to such countries as declare, in acceding to this Act, that they
are availing themselves of the right provided for in Article 3bis.
The said countries may also declare at the same time that the application of
this Act shall be limited to marks registered from the day on which their
accessions enter into force; however, such limitation shall not affect
international marks which have already been the subject of an earlier identical
national registration in those countries, and which could give rise to requests
for extension of protection made and notified in accordance with Articles 3ter
and 8(2)(c).
(g) Registrations of marks which have been the subject of one of the
notifications provided for in this paragraph shall be regarded as replacing
registrations effected direct in the new contracting country before the date of
entry into force of its accession.
(3)
Instruments of ratification and accession shall be deposited with the Director
General.
(4)
(a) With respect to the first five countries which have deposited
their instruments of ratification or accession, this Act shall enter into force
three months after the deposit of the fifth such instrument.
(b) With respect to any other country, this Act shall enter into
force three months after the date on which its ratification or accession has
been notified by the Director General, unless a subsequent date has been
indicated in the instrument of ratification or accession. In the latter case,
this Act shall enter into force with respect to that country on the date thus
indicated.
(5)
Ratification or accession shall automatically entail acceptance of all the
clauses and admission to all the advantages of this Act.
(6)
After the entry into force of this Act, a country may accede to the Nice Act of
June 15, 1957, only in conjunction with ratification of, or accession
to, this Act. Accession to Acts earlier than the Nice Act shall not be
permitted, not even in conjunction with ratification of, or accession to, this
Act.
(7)
The provisions of Article 24 of the Paris Convention for the
Protection of Industrial Property shall apply to this Agreement.
Article
15
[Denunciation]
(1)
This Agreement shall remain in force without limitation as to time.
(2)
Any country may denounce this Act by notification addressed to the Director
General. Such denunciation shall constitute also denunciation of all earlier
Acts and shall affect only the country making it, the Agreement remaining in
full force and effect as regards the other countries of the Special Union.
(3)
Denunciation shall take effect one year after the day on which the Director
General has received the notification.
(4)
The right of denunciation provided for by this Article shall not be exercised
by any country before the expiration of five years from the date upon which it
becomes a member of the Special Union.
(5)
International marks registered up to the date on which denunciation becomes
effective, and not refused within the period of one year provided for in Article 5,
shall continue, throughout the period of international protection, to enjoy the
same protection as if they had been filed direct in the denouncing country.
Article
16
[Application of Earlier Acts]
(1)
(a) This Act shall, as regards the relations between the countries of
the Special Union by which it has been ratified or acceded to, replace, as from
the day on which it enters into force with respect to them, the Madrid
Agreement of 1891, in its texts earlier than this Act.
(b) However, any country of the Special Union which has ratified or
acceded to this Act shall remain bound by the earlier texts which it has not
previously denounced by virtue of Article 12(4) of
the Nice Act of June 15, 1957, as regards its relations
with countries which have not ratified or acceded to this Act.
(2)
Countries outside the Special Union which become party to this Act shall apply
it to international registrations effected at the International Bureau through
the intermediary of the national Office of any country of the Special Union not
party to this Act, provided that such registrations satisfy, with respect to
the said countries, the requirements of this Act. With regard to international
registrations effected at the International Bureau through the intermediary of
the national Offices of the said countries outside the Special Union which become
party to this Act, such countries recognize that the aforesaid country of the
Special Union may demand compliance with the requirements of the most recent
Act to which it is party.
Article
17
[Signature, Languages, Depository Functions]
(1)
(a) This Act shall be signed in a single copy in the French language
and shall be deposited with the Government of Sweden.
(b) Official texts shall be established by the Director General,
after consultation with the interested Governments, in such other languages as the
Assembly may designate.
(2)
This Act shall remain open for signature at Stockholm until
January 13, 1968.
(3)
The Director General shall transmit two copies, certified by the Government of
Sweden, of the signed text of this Act to the Governments of all countries of
the Special Union and, on request, to the Government of any other country.
(4)
The Director General shall register this Act with the Secretariat of the United
Nations.
(5)
The Director General shall notify the Governments of all countries of the
Special Union of signatures, deposits of instruments of ratification or
accession and any declarations included in such instruments, entry into force
of any provisions of this Act, notifications of denunciation, and notifications
pursuant to Articles 3bis, 9quater,
13,
14(7),
and 15(2).
Article
18
[Transitional Provisions]
(1)
Until the first Director General assumes office, references in this Act to the
International Bureau of the Organization or to the Director General shall be
construed as references to the Bureau of the Union established by the Paris
Convention for the Protection of Industrial Property or its Director,
respectively.
(2)
Countries of the Special Union not having ratified or acceded to this Act may,
until five years after the entry into force of the Convention establishing the
Organization, exercise, if they so desire, the rights provided for under Articles 10
to 13
of this Act as if they were bound by those Articles. Any country desiring to
exercise such rights shall give written notification to that effect to the
Director General; such notification shall be effective from the date of its
receipt. Such countries shall be deemed to be members of the Assembly until the
expiration of the said period.
Trademark
Law of the People's Republic of China
(Adopted
at the 24th Session of the Standing Committee of the Fifth National People's
Congress on 23 August 1982, revised for the first time according to the
Decision on the Amendment of the Trademark Law of the People's Republic of China
adopted at the 30th Session of the Standing Committee of the Seventh
National People's Congress, on 22 February 1993, and revised for the second
time according to the Decision on the Amendment of the Trademark Law of the
People's Republic of China adopted at the 24th Session of the
Standing Committee of the Ninth National People's Congress on 27 October 2001.)
Chapter
l General Provisions
Article
1 This Law is enacted for the purposes of
improving the administration of trademarks, protecting the exclusive right to
use trademarks, and of encouraging producers and operators to guarantee the
quality of their goods and services and maintaining the reputation of their
trademarks, with a view to protecting the interests of consumers, producers and
operators and to promoting the development of the socialist market economy.
Article
2 The Trademark Office of the administrative
authority for industry and commerce under the State Council shall be
responsible for the registration and administration of trademarks throughout
the country.
The
Trademark Review and Adjudication Board, established under the administrative
authority for industry and commerce under the State Council, shall be
responsible for handling matters of trademark disputes.
Article
3 Registered trademarks mean trademarks that have
been approved and registered by the Trademark Office, including trademarks,
service marks, collective marks and certification marks; the trademark
registrants shall enjoy the exclusive right to use the trademarks, and be
protected by law.
Said
collective marks mean sings which are registered in the name of bodies,
associations or other organizations to be used by the members thereof in their
commercial activities to indicate their membership of the organizations.
Said
certification marks mean signs which are controlled by organizations capable of
supervising some goods or services and used by entities or individual persons
outside the organization for their goods or services to certify the origin,
material, mode of manufacture, quality or other characteristics of the goods or
services.
Regulations
for the particular matters of registration and administration of collective and
certification marks shall be established by the administrative authority for
industry and commerce under the State Council.
Article
4 Any natural person, legal entity or other
organization intending to acquire the exclusive right to use a trademark for
the goods produced, manufactured, processed, selected or marketed by it or him,
shall file an application for the registration of the trademark with the
Trademark Office. Any natural person, legal entity or other organization
intending to acquire the exclusive right to use a service mark for the service
provided by it or him, shall file an application for the registration of the
service mark with the Trademark Office.
The
provisions set forth in this Law concerning trademarks shall apply to service
marks.
Article
5 Two or more natural persons, legal entities or
other organizations may jointly file an application for the registration for
the same trademark with the Trademark Office, and jointly enjoy and exercise
the exclusive right to use the trademark.
Article
6 As for any of such goods, as prescribed by the
State, that must bear a registered trademark, a trademark registration must be
applied for. Where no trademark registration has been granted, such goods
cannot be marketed.
Article
7 Any user of a trademark shall be responsible
for the quality of the goods in respect of which the trademark is used. The
administrative authorities for industry and commerce at different levels shall,
through the administration of trademarks, stop any practice that deceives
consumers.
Article
8 In respect of any visual sign capable of
distinguishing the goods or service of one natural person, legal entity or any
other organization from that of others, including any word, design, letters of
an alphabet, numerals, three-dimensional symbol, combinations of
Colours,
and their combination, an application may be filed for registration.
Article
9 Any trademark in respect of which an
application for registration is filed shall be so distinctive as to be
distinguishable, and shall not conflict with any prior right acquired by
another person.
A
trademark registrant has the right to use the words of "registered
trademark" or a symbol to indicate that his trademark is registered.
Article
10 The following signs shall not be used as
trademarks:
(1)
those identical with or similar to the State name, national flag, national
emblem, military flag, or decorations, of the People's Republic of China, with
names of the places where the Central and State organs are located, or with the
names and designs of landmark buildings;
(2)
those identical with or similar to the State names, national flags, national
emblems or military flags of foreign countries, except that the foreign state
government agrees otherwise on the use;
(3)
those identical with or similar to the names, flags or emblems or names, of
international intergovernmentaI organizations, except that the organizations
agree otherwise on the use or that it is not easy for the use to mislead the
public;
(4)
those identical with or similar to official signs and hallmarks, showing
official control or warranty by them, except that the use thereof is otherwise
authorized;
(5)
those identical with or simi1ar to the symbols, or names, of the Red Cross or
the Red Crescent;
(6)
those having the nature of discrimination against any nationality;
(7)
those having the nature of exaggeration and fraud in advertising goods; and
(8)
those detrimental to socialist morals or customs, or having other unhealthy
influences.
The
geographical names as the administrative divisions at or above the county level
and the foreign geographical names well known to the public shall not be used
as trademarks, but such geographical terms as have otherwise meanings or are a
part of collective marks/or a certification marks shall be exclusive. Where a
trademark using any of the above-mentioned geographical names has been approved
and registered, it shall continue to be valid.
Article
11 The following signs shall not be registered as
trademarks:
(1)
those only comprising generic names, designs or models of the goods in respect
of which the trademarks are used; -
(2)
those having direct reference to the quality, main raw materials, function,
use, weight, quantity or other features of the goods in respect of which the
trademarks are used; and
(3)
those lacking distinctive features.
The
signs under the preceding paragraphs may be registered as trademarks where they
have acquired the distinctive features through use and become readily
identifiable.
Article
12 Where an application is filed for registration
of a three-dimensional sign as a trademark, any shape derived from the goods
itself, required for obtaining the technical effect, or giving the goods
substantive value, shall not be registered.
Article
13 Where a trademark in respect of which the
application for registration is filed for use for identical or similar goods is
a reproduction, imitation or translation of another person's trademark not
registered in China and likely to cause confusion, it shall be rejected for
registration and prohibited from use.
Where
a trademark in respect of which the application for registration is filed fdr
use for non-identical or dissimilar goods is a reproduction, imitation or
translation of the well-known mark of another person that has been registered
in China, misleads the pub1ic and is likely to create prejudice to the interests
of the well-known mark registrant, it shall be rejected for registration and
prohibited from use.
Article
14 Account shall be taken of the fol1owing factors
in establishment of a well-known mark:
(l)
reputation of the mark to the relevant public;
(2)
time for continued use of the mark;
(3)
consecutive time, extent and geographical area of advertisement of the mark;
(4)
records of protection of the mark as a well-known mark; and
(5)
any other factors relevant to the reputation of the mark.
Article
15 Where any agent or representative registers, in
its or his own name, the trademark of a person for whom it or he acts as the
agent or representative without authorization therefrom, and the latter raises
opposition, the trademark shall be rejected for registration and prohibited
from use.
Article
16 Where a trademark contains a geographic
indication of the goods in respect of which the trademark is used, the goods is
not from the region indicated therein and it misleads the public, it shall be
rejected for registration and prohibited from use; however, any trademark that
has been registered in good faith shall remain valid.
The
geographic indications mentioned in the preceding paragraph refer to the signs
that signify the place of origin of the goods in respect of which the signs are
used, their specific quality, reputation or other features as mainly decided by
the natural or cultural factors of the regions.
Article
17 Any foreign person or foreign enterprise
intending to apply for the registration of a trademark in China shall file an
application in accordance with any agreement concluded between the People's
Republic of China and the country to which the applicant belongs, or according
to the international treaty to which both countries are parties, or on the
basis of the principles of reciprocity.
Article
18 Any foreign person or foreign enterprise
intending to apply for the registration of a trademark or for any other matters
conceming a trademark in China sha1l appoint any of such organizations as
designated by the State to act as its or his agent.
Chapter
II AppIication for Trademark Registration
Article
19 An applicant for the registration of a
trademark shall, in a form, indicate, in accordance with the prescribed
classification of goods, the class of the goods and the designation of the
goods in respect of which the trademark is to be used.
Article
20 Where any applicant for registration of a
trademark intends to use the same trademark for goods in different classes, an
application for registration shall be filed in respect of each class of the
prescribed classification of goods.
Article
21 Where a registered trademark is to be used in
respect of other goods of the same class, a new application for registration
shall be filed.
Article
22 Where the sign of a registered trademark is to
be altered, a new registration shall be applied for.
Article
23 Where, after the registration of a trademark,
the name, address or other registered matters concerning the registrant change,
an application regarding the change shall be filed.
Article
24 Any aPp1icant for the registration of a
trademark who files an application for registration of the same trademark for
identica1 goods in China within six months from the date of filing the first
application for the trademark registration overseas may enjoy the right of
priority in accordance with any agreement concluded between the People's
Republic of China and the country to which the applicant belongs, or according
to the international treaty to which both countries are parties, or on the
basis of the principle whereby each acknowledges the right of priority of the
other.
Anyone
claiming the right of priority according to the preceding paragraph shall make
a statement in writing when it or he files the application for the trademark
registration, and submit, within three months, a copy of the application
documents it or he first filed for the registration of the trademark; where the
applicant fails to make the claim in writing or submit the copy of the application
documents within the time limit, the claim shall be deemed not to have been
made for the right of priority.
Article
25 Where a trademark is first used for goods in an
international exhibition on sponsored or recognized by me Chinese Government,
the applicant for the registration of the trademark may enjoy the right of
priority within six months from the date of exhibition of the goods.
Anyone
claiming the right of priority according to the preceding paragraph shall make
a claim in writing when it or he files the application for the registration of
the trademark, and submit, within three months, documents showing the title of
the exhibition in which its or his goods was displayed, proof that the
trademark was used for the goods exhibited, and the date of exhibition; where
the claim is not made in writing, or the proof documents not submitted within
the time limit, the claim shall be deemed not to have been made for the right
of priority.
Article
26 The matters reported and materials submitted in
the application for trademark registration shall be true, accurate and
complete.
Chapter
lII Examination for and ApprovaI of Trademark Registration
Article
27 Where a trademark the registration of which has
been applied for is in conformity with the relevant provisions of this Law, the
Trademark Office shall, after examination, preliminarily approve the trademark
and publish it.
Article
28 Where a trademark the registration of which has
been applied for is not in conformity with the relevant provisions of this Law,
or it is identical with or similar to the trademark of another person that has,
in respect of the same or similar goods, been registered or, after examination,
preliminarily approved, the Trademark Office shall refuse the application and
shall not publish the said trademark.
Article
29 Where two or more applicants apply for the
registration of identical or similar trademarks for the same or similar goods,
the preliminary aPproval, after examination, and the publication shall be made
for the trademark which was first filed. Where applications are filed on the
same day, the preliminary approval, after examination, and the publication
shall be made for the trademark which was the earliest used, and the
applications of the others shall be refused and their trademarks shall not be
published.
Article
30 Any person may, within three months from the
date of the publication, file an opposition against the trademark that has,
after examination, been preliminarily approved. If no opposition has been filed
after the expiration of the time limit from the publication, the registration
shall be approved, a certificate of trademark registration shall be issued and
the trademark shall be published.
Article
31 An application for the registration of a
trademark shall not create any prejudice to the prior right of another person,
nor unfair means be used to pre-emptively register the trademark of some
reputation another person has used.
Article
32 Where the application for registration of a
trademark is refused and no publication of the trademark is made, the Trademark
Office shall notify the applicant of the same in writing. Where the applicant
is dissatisfied, he may, within fifteen days from receipt of the notice, file
an application with the Trademark Review and Adjudication Board for a review.
The Trademark Review and Adjudication Board shall make a decision and notify
'the applicant in writing.
Any
interested party who is not satisfied with the decision made by the Trademark
Review and Adjudication Board may, within thirty days from receipt of the
notice, institute legal proceedings in the People's Court.
Article
33 Where an opposition is filed against the
trademark that has, after examination, been preliminarily approved and
published, the Trademark Office shall hear both the opponent and applicant
state facts and grounds, and shall, after investigation and verification, make
a decision. Where any party is dissatisfied, it or he may within fifteen days
from receipt of the notification, apply for a reexamination, and the Trademark
Review and Adjudication Board shall make a decision and notify both the
opponent and applicant in writing.
Any
interested party who is not satisfied with the decision made by the Trademark
Review and Adjudication Board within thirty days from the date of receipt of
the notice, may institute legal proceedings in the People's Court. The People's
Court shall notify the other party to the trademark reexamination proceeding to
be a third party to the litigation.
Article
34 Where the interested party does not, within the
statutory time limit, apply for the reexamination of the adjudication by the
Trademark Office or does not institute legal proceedings in respect of the ad
judication by the Trademark Review and Ad judication Board, the adjudication takes
effect.
Where
the opposition cannot be established upon ad judication, the registration shall
be approved, a certificate of trademark registration shall be issued and the
trademark shall be published; where the opposition is established upon adjudication,
the registration shall not be approved.
Where
the opposition cannot be established upon ad judication, but the registration
is approved, the time of the exclusive right the trademark registration
applicant has obtained to use the trademark is counted from the date on which
the three months expires from the publication of the preliminary examination.
Article
35 Any application for trademark registration and
trademark reexamination shall be examined in due course.
Article
36 Where any trademark registration applicant or
registrant finds any obvious errors in the trademark registration documents or
application documents, it or he may apply for correction thereof The Trademark
Office shall ex officio make the correction according to law and notify the interested
party of the correction.
The
error correction mentioned in the preceding paragraph shall not relate to the
substance of the trademark registration documents or application documents.
Chapter
IV RenewaI, Assignment and Licensing of Registered Trademarks
Article
37 The period of validity of a registered
trademark shall be ten years, counted from the date of approval of the
registration.
Article
38 Where the registrant intends to continue to use
the registered trademark beyond the expiration of the period of validity, an
application for renewal of the registration shall be made within six months
before the said expiration. Where no application therefore has been filed
within the said period, a grace period of six months may be allowed. If no application
has been filed at the expiration the grace period, the registered trademark
shall be cancelled.
The
period of validity of each renewal of registration shaIl be ten years.
Any
renewa1 of registration shall be published after it as been approved.
Article
39 Where a registered trademark is assigned, the
assignor and assignee shall conclude a contract for the assignment, and jointly
file an application with the trademark Office. The assignee shall guarantee the
quality of the goods in respect of which the registered trademark is used.
The
assignment of a registered trademark shall be published after it has been
approved, and the assignee enjoys the exclusive right to use the trademark from
the date of publication.
Article
40 Any trademark registrant may, by signing a
trademark license contf8ct, authorize other persons to use his registered
trademark. The licensor shall supervise the quality of the goods in respect of
which the licensee uses his registered trademark, and the licensee shall
guarantee the quality of the goods in respect of which the registered Trademark
is used.
Where
any party is authorized to use a registered trademark of another person, the
name of the licensee and the origin of the goods must be indicated on the goods
that bear the registered trademark.
The
trademark license contract shall be submitted to the Trademark Office for
record. Chapter V Adjudication of Disputes Concerning Registered Trademarks
Article
41 Where a registered trademark stands in
violation of the provisions of Articles 10, 11 and 12 of this Law, or the
registration of a trademark was acquired by fraud or any other unfair means,
the Trademark Office shall cancel the registered trademark in question; and any
other organization or individual may request the Trademark Review and Ad
judication Board to make an adjudication to cancel such a registered trademark.
Where
a registered trademark stands in violation of the provisions of Articles l3,
l5, l6 and 3l of this Law, any other trademark owner concerned or interested
party may, within five years from the date of the registration of the
trademark, file a request with the Trademark Review and Adjudication Board for
adjudication to cancel the registered trademark. Where a well-known mark is
registered in bad faith, the genuine owner thereof shall not be restricted by
the five-year limitation.
In
addition to those cases as provided for in the preceding two paragraphs, any
person disputing a registered trademark may, within five years from the date of
approval of the trademark registration, apply to the Trademark Review and
Adjudication Board for adjudication.
The
Trademark Review and Adjudication Board shall, after receipt of the application
for adjudication, notify the interested parties and request them to respond with
arguments within a specified period.
Article
42 Where a trademark, before its being approved
for registration, has been the object of opposition and decision, no
application for adjudication may be filed based on the same facts and grounds.
Article
43 After the Trademark Review and Adjudication
Board has made an adjudication either to maintain or to cancel a registered
trademark, it shall notify the interested parties of the same in writing.
Any
interested party who is dissatisfied with the adjudication made by the
Trademark Review and Adjudication Board may, within thirty days from the date
of receipt of the notice, institute legal proceedings in the People's Court.
The People's Court shall notify the other party of the trademark adjudication
proceeding to be a third party to the legal proceedings.
Chapter
Vl Administration of the Use of Trademarks
Article
44 Where any person who uses a registered
trademark has committed any of the following, the Trademark Office shall order
him to rectify the situation within a specified period or even cancel the
registered trademark:
(1)
where a registered trademark is altered unilaterally (that is, without the
required registration);
(2)
where the name, address or other registered matters concerning the registrant
of a registered trademark are changed unilaterally (that is, without the
required application ),
(3)
where the registered trademark is assigned unilaterally (that is, without the
required approval); or
(4)
where the use of the registered trademark has ceased for three consecutive
years.
Article
45 Where a registered trademark is used in respect
of the goods that have been roughly or poorly manufactured, or whose superior
quality has been replaced by inferior quality, so that consumers are deceived,
the administrative authorities for industry and commerce at different levels
shall, according to the circumstances, order rectification of the situation
within a specified period, and may, in addition, circulate a notice of
criticism or impose a fine, and the Trademark Office may even cancel the
registered trademark.
Article
46 Where a registered trademark has been cancelled
or has not been renewed at the expiration, the Trademark Office shall, during
one year from the date of the cancellation or removal thereof, approve no
application for the registration of a trademark that is identical with or
similar to the said trademark.
Article
47 Where any person violates the provisions of
Article 6 of this Law, the local administrative authority for industry and commerce
shall order him to file an application for the registration within a specified
period, and may, in addition, impose a fine.
Article
48 Where any person who uses an unregistered
trademark has committed any of the following, the local administrative authority
for industry and commerce shall stop the use of the trademark, order him to
rectify the situation within a specified period, and may, in addition,
circulate a notice of criticism or impose a fine:
(1)
where the trademark is falsely represented as registered;
(2)
where any provision of Article 10 of this Law is violated; or
(3)
where the manufacture is of rough or poor quality, or where superior quality is
replaced by inferior quality, so that 'consumers are deceived.
Article
49 Any party dissatisfied with the decision of the
Trademark Office to cancel a registered trademark may, within fifteen days from
receipt of the corresponding notice, apply for a review. The Trademark Review
and Adjudication Board shall make a decision and notify the applicant in
writing.
Any
interested party dissatisfied with the decision by the Trademark Review and
Adjudication Board may, within thirty days from the date of receipt of the
notice, institute legal proceedings in the People's Court.
Article
50 Any party dissatisfied with the decision of the
administrative authority for industry and commerce to impose a fine under the
provisions of Article 45, Article 47 or Article 48 may, within fifteen days
from receipt of the corresponding notice, institute legal proceedings with the
People's Court. If there have been instituted no legal proceedings or made no
performance of the decision at the expiration of the said period, the
administrative authority for industry and commerce may request the People's
Court for compulsory execution thereof.
Chapter
VlI Protection of the ExcIusive Rights to Use Registered Trademarks
Article
51 The exclusive right to use a registered
trademark is limited to the trademark which has been approved for registration
and to the goods in respect of which the use of the trademark has been
approved.
Article
52 Any of the following acts shall be an
infringement of the exclusive right to use a registered trademark:
(1)
to use a trademark that is identical with or similar to a registered trademark
in respect of the identical or similar goods without the authorization from the
trademark registrant;
(2)
to sell goods that he knows bear a counterfeited registered trademark;
(3)
to counterfeit, or to make, without authorization, representations of a registered
trademark of another person, or to sell such representations of a registered
trademark as
were
counterfeited, or made without authorization;
(4)
to replace, without the consent of the trademark registrant, its or his
registered trademark and market again the goods bearing the replaced trademark;
or
(5)
to cause, in other respects, prejudice to the exclusive right of another person
to use a registered trademark.
Article
53 Where any party has committed any of such acts
to infringe the exclusive right to use a registered trademark as provided for
in Article 52 of this Law and has caused a dispute, the interested parties
shall resolve the dispute through consultation; where they are reluctant to
resolve the matter through consultation or the consultation fails, the
trademark registrant or interested party may institute legal proceedings in the
People's Court or request the administrative authority for industry and
commerce for actions. Where it is established that the infringing act is
constituted in its handling the matter, the administrative authority for
industry and commerce handling the matter shall order the infringer to
immediately stop the infringing act, confiscate and destroy the infringing
goods and tools specially used for the manufacture of the infringing goods and
for counterfeiting the representations of the registered trademark, and impose
a fine. Where any interested party is dissatisfied with decision on handling
the matter, it or he may, within fifteen days from the date of receipt of the
notice, institute legal proceedings in the People's Court
according
to the Administrative Procedure Law of the People's Republic of China. If there
have been instituted no legal proceedings or made on performance of the
decision at the expiration of the said period, the administrative authority for
industry and commerce shall request the People's Court for compulsory execution
thereof. The administrative authority for industry and commerce handling the
matter may, upon the request of the interested party, medicate on the amount of
compensation for the infringement of the exclusive right to use the trademark;
where the medication fails, the interested party may institute legal
proceedings in the People's Court according to the Civil Procedure Law of the
People's Republic of China.
Article
54 The administrative authority for industry and
commerce has the power to investigate and handle any act of infringement of the
exclusive right to use a registered trademark according to law; where the case
is so serious as to constitute a crime, it shall be transferred to the judicial
authority for handling.
Article
55 When investigating and handling an act
suspected of infringement of a registered trademark, the administrative
authority for industry and commerce at or above the county level may, according
to the obtained evidence of the suspected violation of law or informed offence,
exercise the following functions and authorities:
(1
) to inquire of the interested parties involved, and to investigate the
relevant events of the infringement of the exclusive right to use the
trademark;
(2)
to read and make copy of the contract, receipts, account books and other
relevant materials of the interested parties relating to the infringement;
(3)
to inspect the site where the interested party committed the alleged
infringement of the exclusive right to use the trademark; and
(4)
to inspect any articles relevant to the infringement; any articles that prove
to have been used for the infringement of another person's exclusive right to
use the trademark may be sealed up or seized.
When
the administrative authority for industry and commerce exercises the preceding
functions and authorities, the interested party shall cooperate and help, and
shall not refuse to do so or stand in the way.
Article
56 The amount of damages shall be the profit that
the infringer has earned because of the infringement in the period of the
infringement or the injury that the infringee has suffered from the
infringement in the period of the infringement, including the appropriate
expenses of the infringee for stopping the infringement.
Where
it is difficult to determine the profit that the infringer has earned because
of the infringement in the period of the infringement or the injury that the
infringee has suffered from the infringement in the period of the infringement,
the People's Court shall impose an amount of damages of no more than RMB 500,
000 yuan according to the circumstances of the infringement.
Anyone
who sells a goods that it or he does not know has infringed the exclusive right
to use a registered trademark, and is able to prove that it or he has obtained
the goods legitimately and indicates the supplier thereof shall not bear the
liability for damages.
Article
57 Where a trademark registrant or interested
party who has evidence to show that another person is committing or will commit
an infringement of the right to use its or his registered trademark, and that
failure to promptly stop the infringement will cause irreparable damages to its
or his legitimate rights and interests, it or he may file an application with
the People's Court to order cessation of the relevant act and to take measures
for property preservation before instituting legal proceedings in the People's
Court.
The
People's Court handling the application under the preceding paragraph shall
apply the provisions of Articles 93 to 96 and 99 of the Civil Procedure Law of
the People's Republic of China.
Article
58 In order to stop an infringing act, any
trademark registrant or interested party may file an application with the
People's Court for preservation of the evidence before instituting legal
proceedings in the People's Court where the evidence will possibly be destroyed
or lost or difficult to be obtained again in the future. The People's Court
must make adjudication within forty-eight hours after receipt of the
application; where it is decided to take the preservative measures, the
measures shall be executed immediately. The People's Court may order the
applicant to place guaranty; where the applicant fails to place the guaranty,
the application shall be rejected.
Where
the applicant institutes no legal proceedings within fifteen days after the
People's Court takes the preservative measures, the People's Court shall release
the measures taken for the preservation.
Article
59 Where any party uses, without the authorization
from the trademark registrant, a trademark identical with a registered
trademark, and the case is so serious as to constitute a crime, he shall be
prosecuted, according to law, for his criminal liabilities in addition to his
compensation for the damages suffered by the infringee.
Where
any party counterfeits, or makes, without authorization, representations of a
registered trademark of another person, or sells such representations of a
registered trademark as were counterfeited, or made without authorization, and
the case is so serious as to constitute a crime, he shall be prosecuted,
according to law, for his criminal liabilities in addition to his compensation
for the damages suffered by the infringee.
Where
any party sells goods that he knows bear a counterfeited registered trademark,
and the case is so serious as to constitute a crime, he shall be prosecuted,
according to law, for his criminal liabilities in addition to his compensation
for the damages suffered by the infringee.
Article
60 The State functionaries for the registration,
administration and reexamination of trademarks must handle cases according to
law, be incorruptible and disciplined, devoted to their duties and courteous
and honest in their provision of service.
The
State functionaries of the Trademark Office and the Trademark Review and
Adjudication Board and those working for the registration, administration and
reexamination of trademarks shall not practice as trademark agent and engage in
any activity to manufacture and market goods.
Article
61 The administrative authority for industry and
commerce shall establish and amplify its internal supervision system to
supervise and inspect the State functionaries for the registration,
administration and reexamination of trademarks in their implementation of the
laws and administrative regulations and in their observation of the discipline.
Article
62 Where any State functionary for the registration,
administration and reexamination of trademarks neglects his duty, abuses his
power, engages in malpractice for personal gain, handles the registration,
administration and reexamination of trademarks in violation of law, accepts
money or material wealth from any interested party or seeks illicit interest,
which constitutes a crime, he or she shall be prosecuted for his or her
criminal liabi1ity. If the case is not serious enough to constitute a crime, he
or she shall be given disciplinary sanction according to law.
Chapter
VIII Supplementary Provisions
Article
63 Any application for a trademark registration
and for other matters concerning a trademark shall be subject to payment of the
fees as prescribed. The schedule of fees shall be prescribed separately.
ArticIe
64 This Law shall enter into force on March l,
l983. The "Regulations Governing Trademarks" promulgated by the State
Council on April l0, l963 shall be abrogated on the same date, and any other
provisions concerning trademarks contrary to this Law shall cease to be
effective at the same time.
Trademarks
registered before this Law enters into force shall continue to be valid.
-
Implementing Regulations of the
Trademark Law of the People's Republic of China
Implementing
Regulations of the Trademark Law of the People's Republic of China
(Promulgated
by the State Council on 3 August 2002)
Chapter
l General Provisions
Article
1 These Implementing Regulations are formulated in
accordance with the Trademark Law of the People's Republic of China
(hereinafter referred to as the Trademark Law).
Article
2 The provisions made in these Implementing
Regulations concerning goods marks shall apply to service marks.
Article
3 The use of trademarks referred to in the
Trademark Law and these Regulations include, among other things, the use of
trademarks on goods, Packages or containers thereof and commodity trading
instruments, or use of trademarks in advertisements, exhibitions and other
commercial activities.
Article
4 Goods required to bear registered trademarks as
prescribed by the State mentioned in Article 6 of the Trademark Law refer to
goods in respect of which registered trademarks must be used as prescribed by
law and administrative regulations.
Article
5 Under the Trademark Law and these Regulations,
when an interested party believes his trademark constitutes a well-known
trademark when a dispute arises in the course of trademark registration or
trademark review and adjudication, he may file a request with the Trademark
Office or the Trademark Review and Adjudication Board to establish it as a
well-known trademark, to reject the trademark registration application contrary
to the provision of Article l3 of the Trademark Law, or to cancel the trademark
registration contrary to the provision of Article 13 of the Trademark Law. When
filing an application, an interested party shall submit proofs that his
trademark constitutes a well-known trademark.
At
the request of the interested party, the Trademark Office or the Trademark
Review and Adjudication Board shall, on the basis of ascertained facts,
establish whether his trademark constitutes a well-known trademark pursuant to
the provision of Article 14 of the Trademark Law.
Article
6 Applications may be filed for registration of
geographic indications provided for in Article l6 of the Trademark Law as
certification marks or collective marks in accordance with the provisions of
the Trademark Law and these Regulations.
Where
a geographic indication is registered as a certification mark, the natural
person, legal person or other organization whose goods has met the requirement
imposed on the geographic indications may request for using the certification
mark, and the organization having control on the certification mark shall give
its permission. Where a geographic indication is registered as a collective
mark, the natural person, legal person or other organization whose goods has
met the requirement imposed on the geographic indications may request for
membership of the body, association or other organization having the geographic
indication as its collective mark. The body, association or other organization
shall accept him or it as its member according to the articles of constitution
thereof. Any person who does not ask to join the body, association or other
organization having the geographic indication as its collective mark may also
duly use the geographic indication, and the body, association or other
organization does not have the right to prohibit the use.
Article
7 An interested party entrusting a trademark
agency with the filing of an application for trademark registration or
attending to other trademark matters shall submit a Power of Attorney. The
Power of Attorney}' shall indicate such contents and competence as authorized:
the Power of Attorney from a foreign person or foreign enterprise shall, in
addition, indicate the nationality of the entruster.
Notarization
and legalization of the Power of Attorney and other relevant certificates from
a foreign person or foreign enterprise' shall be done based on the principle of
reciprocity.
The
foreign person or foreign enterprise mentioned in Article l8 of the Trademark
Law refers to the foreign person who or foreign enterprise which does not have
its habitual residence or place of business in China.
Article
8 The Chinese language shall be used in applying
for trademark registration or attending to other trademark matters.
Where
the various certificates, certifying documents and proofs submitted under the
Trademark Law and these Regulations are in a foreign language, the Chinese
translation thereof shall be attached; where the Chinese translation is not
attached, the certificates, certifying documents and proofs shall be deemed not
to have been submitted.
Article
9 In any one of the following circumstances, any
staff member of the Trademark Office and the Trademark Review and Adjudication
Board shall withdraw, or a party or interested Part} may request him to
withdraw:
(l)
he is a party or a close relative to a party or agent;
(2)
he is related in such a way with a party or agent insofar as the relation would
affect impartiality; or
(3)
he has interests in an application for trademark registration or an}' other
trademark matters.
Article
l0 Unless otherwise provided for in these
Regulations, where any document is sent to the Trademark Office or the
Trademark Review and Adjudication Board, the date of receipt shall be the date
of delivery where it is delivered personally}. or the date of posting indicated
by the postmark if it is sent by post; where the date of posting indicated by
the postmark is illegible, or there is no postmark, the date of receipt shall
be the date on which the Trademark Office or the Trademark Review and Adjudication
Board actually receives the document, except that the interested Part]' is able
to present evidence as to the actual date of posting indicated by the postmark.
Article
11 Any document of the Trademark Office or the
Trademark Review and Adjudication Board may be served by post, by personal
delivery or by other means. Where an interested party entrusts a trademark
agency, delivery of the document to the trademark agency shall be deemed
delivery thereof to the interested party.
Where
any document is sent to an interested party by the Trademark Office or the
Trademark Review and Adjudication Board. the date of receipt shall be the date
of receipt indicated b]- the postmark on which the interested party receives it
if it is sent by post; where the date of Posting indicated by the postmark is
i1legible, or where there is no postmark. the document shal1 be deemed to have
been delivered to the interested party on the fifteenth day from the date of
posting the document; the date of receipt shall be the date of delivery if it
is delivered personally. Where any document cannot be sent by post or by
personal delivery, the document may be served b}' making an announcement. At
the expiration of the thirtieth day from the date of the announcement, the
document shall be deemed to have been served.
Article
12 Where an application is filed for international
registration, it shall be done in accordance with the relevant international
treaties to which China has acceded. The specific measures shall be prescribed
by the administrative department for industry and commerce under the State
Council.
Chapter
II Application for Trademark Registration
Article
13 In application for the registration of a
trademark, a separate application shall be filed in respect of each class of goods
or service according to the published Classification of Goods and Services. For
each application for the trademark registration, an Application for Trademark
Registration shall be filed with the Trademark Office, accompanied by five
copies of the reproduction of the trademark; if colour is claimed, five copies
of the colour reproduction of the trademark shall be attached, so shall be a
black and white design of the trademark.
The
reproduction of the trademark must be clear and easy to paste and shall be
printed on smooth and clean durable paper or substituted by a photograph. Its
length or breadth shall not be more than l0 cm and less than 5 cm each.
Where
an application is filed for the registration of a three-dimensional sign as a
trademark, a statement shall be made in the application, and the reproduction
capable of defining the three-dimensional formation be submitted.
Where
an application is filed for the registration of a combination of colours as a
trademark, a statement shall be made in the application, and an explanation
thereof be submitted in writing.
Where
an application is filed for the registration of a certification mark or
collective mark, a statement shall be made in the application, and the
certificates of the qualification of the applicant and regulations for the
administration of the use thereof be submitted.
Where
a trademark is in a foreign language or contains lexical elements in a foreign
language, explanation of its meaning shall be made.
Article
14 When filing an application for the registration
of a trademark, the applicant shall submit a copy of effective certificate
capable of proving his identification. The name of the applicant for trademark
registration shall be consistent with the certificate submitted.
Article
15 The goods or services shall be listed in the
application according to the Classification of Goods and Services. If the goods
or services are not listed in the Classification of Goods and Services, a
description of the 5aid goods or services shall be attached.
The
documents relating to an application for trademark registration shall be
typewritten or printed.
Article
16 If an application is jointly filed for
registration of the same trademark, a representative shall be designated in the
application; if such representative is not designated, the first person listed
in the application shall be the representative.
Article
17 If an applicant changes his name, address,
agent, or deletes or reduces designated goods, he may go through the
formalities for the change with the Trademark Office.
An
applicant who assigns his application for trademark registration shall go
through the formalities for the assignment with the Trademark Office.
Article
18 The filing date of an application for trademark
registration shal1 be the date on which the Trademark Office receives the
application documents.
Where
the formal requirements of the application are fulfilled and the application
form filled out according to the relevant rules, the Trademark Office will
accept the application and notify the applicant in writing. Where the formal
requirements are not fulfilled or the application form not filled out according
to the relevant rules, the Trademark Office will not accept it, and it shall
notify the applicant in writing and explain the reason. Where the formal
requirements are basically fulfilled or the application form filled out
basica1ly according to the relevant rules, but amendments are required, the
Trademark Office shall notify the applicant to make the amendments and require
him to do so according to the contents prescribed and re-submit it to the
Trademark Office within thirty days from the date on which he receives the
notification. Where the application is amended and re-submitted to the
Trademark Office within the time limit, the date of filing shall be retained.
Where the application is not amended within the time limit, the application
shall be deemed to have been abandoned, and the Trademark Office shall notify
the applicant in writing.
Article
19 Where two or more applicants respectively apply
for the registration of identical or similar trademarks used on the identica1
or similar goods on the same day, each applicant sha1l, within thirty days from
the date of receipt of the notification of the Trademark Office, submit a proof
of his prior use of the mark in respect of which he has applied for the
registration. Where the applicants used the mark for the first time on the same
day or where none of them has used the mark, they shall try to resolve the
matter through consultation, and submit a written agreement to the Trademark
Office within thirty days from the date of receipt of the notification from the
Trademark Office; where the applicants are reluctant to resolve the matter
through consultation or an agreement is not reached, the Trademark Office shall
notify the applicants that one applicant will be singled out by lot, and reject
the registration applications filed by the other applicants. Where the
Trademark Office notifies an applicant, but the applicant does not show up and
draw his lot, his application shall be deemed to have been abandoned, and the
Trademark Office shall notify in writing the applicant who has failed to show
up.
Article
20 Where an applicant claims the right of priority
according to Article 24 of the Trademark Law, the copy of the application
document which he first filed for the registration of the trademark shall be
certified by the competent trademark authority accepting the application, with
the date of filing and the application number indicated.
Where
an applicant claims the right of priority according to Article 25 of the
Trademark Law, the certification documents submitted by him shall be certified
by the administrative department for industry and commerce under the State
Council, except that the international exhibition on which the goods are put on
display is held inside the territory of China.
Chapter
III Examination of Application for Trademark Registration
Article
21 The Trademark Office shall, in accordance with
the Trademark Law and these Regulations, examine the applications for the
registration of trademark it has accepted. Applications which conform to the
relevant provisions, or those for the registration of trademarks in respect of
a part of the designated goods which conform to the relevant provisions, shall
be preliminarily approved and published. Applications which do not conform to
the relevant provisions, or those for the registration of trademarks in respect
of a part of the designated goods which do not conform to the relevant
provisions, shall be rejected. The Trademark Office shall notify the applicant
in writing and explain the reason for the rejection.
Where
the Trademark Office has preliminarily approved applications for the
registration of trademarks on a part of the designated goods, the applicant may
apply for the abandonment thereof before the date of expiration of the
opposition period; where the applicant abandons the registration of trademarks
in respect of a part of the designated goods, the Trademark Office shall
withdraw the preliminary approval, terminate the examination procedure, and
republish it.
Article
22 Where an opposition is filed to a trademark
which, after examination, has been preliminarily approved and published by the
Trademark Office, the opponent shall submit the Application for Trademark
Opposition in duplicate to the Trademark Office. The Application for Trademark
Opposition shall indicate the issue number of the Trademark Gazette on which
the opposed trademark is published, and the number of preliminary approval of
the opposed trademark. The Application for Trademark Opposition shall contain
the specific requests and facts and grounds, with relevant proofs and
certificates attached.
The
Trademark Office shall send a copy of the Application for Trademark Opposition
to the opposed party and require him to make a reply within thirty days from
the date of his receipt of the copy. His failure to make a rep1y shall not
affect the adjudication by the Trademark Office on the opposition.
Where
an interested party needs to supplement relevant proofs and certificates after
he raises an opposition application or makes a reply, he shall make a statement
in the application or reply, and submit the proofs and certificates within
three months from the date of submission of the application or rep1y; where he
fails to submit them at the expiration of the time limit, the interested party
shall be deemed to have abandoned supplementing the relevant proofs and
certificates.
Article
23 The justification of the opposition mentioned
in Article 34, paragraph two, of the Trademark Law shall include the
justification of the opposition to a registration in respect of a part of the
designated goods. Where such opposition is justified, the application for the
registration of trademarks in respect of that part of the designated goods
shall not be approved.
Where
an opposed trademark has, prior to the coming into effect of the adjudication
on the opposition, been announced as a registered trademark in the Trademark
Gazette, the registration announcement shall be cancelled. The trademark that
has been approved for registration upon the adjudication on the opposition
sha1l be re-published.
The
trademark approved for registration upon the adjudication on the opposition
shall not have the retroactive effect on another person's act to use a sign
identical with or similarly to the trademark on the same or similar goods from
the date on which the period for trademark opposition expires and before the
adjudication on the opposition takes effect; however, the losses inflicted to
the trademark registrant due to the bad faith in which the sign is used shall
be compensated.
The
time limit for the application for review and adjudication of the trademark
approved for registration upon the adjudication on the opposition shall be
calculated from the date of publication of the adjudication on the trademark
opposition.
Chapter
IV Modification, Assignment and Renewal of Registered Trademarks
Article
24 When applying for modification of his name,
address or other registration matters, the registrant shall file an Application
for Modification with the Trademark Office. The Trademark Office shall, upon
examination and approval, issue the trademark registrant the relevant
certificates, and make an announcement. Where the application is not approved,
the Trademark Office shall notify the applicant in writing and explain the
reason.
When
applying for modification of his name, the registrant shall submit modification
certificate issued by the relevant registry. An applicant who has not submitted
the modification certificate may do so within thirty days from the date of
filing the application. Where the submission is not made within the time limit,
the application for the modification shall be deemed to have been abandoned,
and the Trademark Office shall notify the applicant in writing.
When
applying for modification of his name and address, the trademark registrant
shall make the modifications in all his registered trademarks. If he fails to
do so, the application for the modification shall be deemed to have been
abandoned, and the Trademark Office shall notify the applicant in writing.
Article
25 When applying for the assignment of a
registered trademark, the assignor and assignee shall file with the Trademark
Office an Application for Assignment of Registered Trademark. The formalities
of applying for the assignment of the registered trademark shall be gone
through by the assignee. The Trademark Office, upon examination and approval of
the application. shall issue the relevant certificate to the assignee and make
an announcement.
When
applying for the assignment of a registered trademark, the trademark registrant
shall assign all the identical or similar trademarks registered in respect of
the same or similar goods. If the registrant fails to do so, the Trademark
Office shal1 notify him to correct the situation within a time limit; if the
correction is not made within the time limit, the application for the
assignment of the registered trademark shall be deemed to have been abandoned,
and the Trademark Office shall notify the applicant in writing.
Any
application for the assignment of a registered trademark that may mislead the
public or cause confusion or exert any other adverse effects shall not be approved
by the Trademark Office. the Trademark Office shall notify the applicant in
writing and explain the reason.
Article
26 If the exclusive right to use a registered
trademark is transferred for reasons other than assignment, the party receiving
the transferred exclusive right to use the registered trademark shall go to the
Trademark Office with relevant certificates or legal instruments to go through
the formalities for the transfer of the exclusive right to use the registered
trademark.
When
applying for a transfer of the exclusive right to use a registered trademark,
the exclusive right holder of the registered trademark shall transfer all the
other identical or similar trademarks registered in respect of the same or
similar goods. If the exclusive right holder fails to do so, the Trademark
Office shall notify him to correct the situation within a time limit; if the
correction is not made within the time limit, the application for the
assignment of the registered trademark shall be deemed to have been abandoned,
and the Trademark Office shall notify the applicant in writing.
Article
27 When applying for the renewal of a trademark
registration, the applicant shall file with the Trademark Office an App1ication
for Renewal of Trademark Registration. After examination and approval of the
application for the renewal of a trademark registration, the Trademark Office
shall issue the relevant certificate and announce it.
The
period of validity of a renewed trademark shall be calculated from the day
after the expiration of the previous period of validity of the said trademark.
Chapter
V Trademark Review and Adjudication
Article
28 The Trademark Review and Adjudication Board
shall accept applications for trademark review and adjudication filed according
to the provisions of Articles 32, 33, 4l and 49 of the Trademark Law, and
conduct, according to law, the review and adjudication on the basis of facts.
Article
29 By having dispute over a registered trademark
mentioned in Article 4l, paragraph three, of the Trademark Law shall be meant
that a registrant of a trademark in respect of which a prior application is
filed for registration thereof alleges that a trademark in respect of which
another person subsequently files an application for its registration is identical
with or similar to his trademark registered in respect of the identical or
similar goods.
Article
30 When applying for the trademark review and
adjudication, the applicant shall file an application with the Trademark Review
and Adjudication Board, and submit the same number of copies thereof as that of
the other parties; when filing the application for reexamination based on the
Decision or Adjudication made by the Trademark Office, the applicant shall
meantime submit a copy of the Decision or Adjudication made by the Trademark
Office.
After
receipt of the application, the Trademark Review and Adjudication Board shall
accept the application found to have met the requirements for acceptance upon
examination; the Trademark Review and Adjudication Board shall not accept the
application if it does not meet the requirements, and notify the applicant in
writing and explain the reason. Where rectification is required, the Trademark
Review and Adjudication Board shall notify the applicant to make the rectification
within thirty days from the date of receipt of the notification. If an
application still fails to meet the requirements after the rectification, the
Trademark Review and Adjudication Board shall not accept it, and notify the
applicant in writing and explain the reason. If the rectification is not made
within the time limit, the application shall be deemed to have been withdrawn,
and the Trademark Review and Adjudication Board shall notify the applicant in
writing.
Where
it finds that an application for the trademark review and adjudication does not
meet the requirements for acceptance after accepting it, the Trademark Review
and Adjudication Board shall reject the application and notify the applicant in
writing and explain the reason.
Article
31 After accepting an application for the
trademark review and adjudication, the Trademark Review and Adjudication Board
shall send, in a timely manner, a copy of the Application to the other party,
and require him to reply within thirty days from the date of receipt of the
copy of the Application, failure to make a reply at the expiration of the time
limit shall not affect the review and adjudication by the Trademark Review and
Adjudication Board.
Article
32 Where an interested party needs to supplement
relevant proofs after he files an application for trademark review and
adjudication or makes a reply, he shall make a statement to this effect in the
Application or Reply, and submit the proofs within three months from the date
of filing the Application or making the Reply; if the proofs are not submitted
at the expiration of the time limit, the supplementation thereof shall be
deemed to have be abandoned.
Article
33 The Trademark Review and Adjudication Board
may, at the request of an interested party or according to practical needs,
decide to conduct a public review and adjudication of the application therefor.
Where
it conducts a public review and adjudication of an application therefor, the
Trademark Review and Adjudication Board shall notify the interested party,
within fifteen days before the public review and adjudication is held, of the
date and place of, and the persons conducting the public review and
adjudication. The interested party shall make a reply within the time limit
fixed in the notification.
Where
the applicant does not reply, nor attend the public review and adjudication,
his application for the trademark review and adjudication shall be deemed to
have been withdrawn, and the Trademark Review and Adjudication Board shall
notify him in writing. Where the respondent does not respond, nor attend the
public review and adjudication, the Trademark Review and Adjudication Board may
conduct a default review and adjudication.
Article
34 Where an applicant requests for the withdrawal
of his application before the Trademark Review and Adjudication Board makes its
decision or adjudication, he may withdraw his application after he explains the
reason in writing to the Trademark Review and Adjudication. Where the
application is withdrawn, the review and adjudication procedure terminates.
Article
35 Where an applicant withdraws his application for
review and adjudication, he shall not file another application for the review
and adjudication on the basis of the same facts and grounds. Where the
Trademark Review and Adjudication Board has made the adjudication or decision
as regards an application for trademark review and adjudication, any person
shall not file another app1ication for the review and adjudication on the basis
of the same facts and grounds.
Article
36 In respect of a trademark the registration of
which is cancelled in accordance with Article 4l of the Trademark Law, the
exclusive right to use the trademark shall be deemed to be non-existent from
the beginning. The decision or adjudication on the cancellation of the
registered trademark has no retroactive effect on a judgment or decision
already made and executed by the People's Court or the administrative
department for industry and commerce on a case of trademark infringement, or on
a trademark assignment or licensing contract executed. However, in respect of
damage done to any other person in bad faith by the trademark registrant, he
shall compensate for the damages.
Chapter
VI Administration of the Use of Trademarks
Article
37 Where a registered trademark is used, it may
carry the indication of ¡°×¢²áÉ̱ꡱ ("Registered Trademark") or the
registration signs of the goods, packaging or description or other attachments
of the goods.
The
registration signs include ×¢ and ®. When used, the registration signs shall be
marked or indicated on the upper or lower right hand corner of the trademark.
Article
38 Where a Certificate of Trademark Registration
is lost or damaged, it is necessary to apply to the Trademark Office for
re-issuance of the Certificate. Where the Certificate is lost, the registrant
shall declare the loss of the Certificate by publishing a declaration in the
Trademark Gazette. The damaged Certificate shall be returned to the Trademark
Office when an application for re-issuance is filed.
Where
a Certificate of Trademark Registration is forged or falsified, criminal
liability shall be imposed according to law based on the provisions governing
the crimes of forging and falsifying certificates issued by the State
administrative authority or other crimes.
Article
39 In respect of any of the acts referred to in
Article 44 (l), (2) and (3) of the Trademark Law, the administrative authority
for industry and commerce shall order the trademark registrant to rectify the
situation within a time limit. If the registrant refuses to comply, the case
shall be submitted to the Trademark Office for cancellation of the registered
trademark.
In
respect of the act referred to in Article 44 (4) of the Trademark Law, any
person may apply to the Trademark Office for cancellation of the said
registered trademark and explain the circumstances. The Trademark Office shall
notify the trademark registrant and require him to furnish, within two months
from the date of receipt of the notification, proof of use of the trademark
before the date on which the application for cancellation is filed, or a
justifiable reason for its non-use. If no proof of use, nor a justifiable
reason for the non-use is furnished at the expiration of the time limit or the
proof is invalid, the Trademark Office shall cancel his registered trademark.
The
proof of use of a trademark referred to in the preceding paragraph includes
proofs of the registrant's using the registered trademark and his licensing any
other person to use the registered trademark.
Article
40 Registered trademarks cancelled according to
the provisions of Articles 44 and 45 of the Trademark Law shall be published by
the Trademark Office, the exclusive right in the registered trademarks shall
terminate on the date of cancellation decision made by the Trademark Office.
Article
4l Where the Trademark Office or the Trademark
Review and Adjudication Board cancels a registered trademark for reasons
re1ating only to a part of the goods designated, the trademark registration in
respect of this part of the designated goods shall be cancelled.
Article
42 The amount of the fine imposed in accordance
with the provisions of Articles 45 and 48 of the Trademark Law shall be less
than 20% of the illegal business turnover or less than two times the illegal
profits.
The
amount of the fine imposed in accordance with the provision of Article 47 of
the Trademark Law shall be less than l0% of the illegal business turnover.
Article
43 Where he licenses another person to use his
registered trademark, the licensor shall submit the trademark licensing
contract to the Trademark Office for filing within three months from the date
on which the contract is concluded.
Article
44 Where any person contravening the provisions of
Article 40, paragraph two, of the Trademark Law, the administrative department
for industry and commerce shall order the offender to rectify the situation
within a prescribed time limit. Where the offender refuses to comply, the
administrative department for industry and commerce shall confiscate the
representations of his trademark. If it is difficult to detach the
representations of the trademark from the goods, both the representations and
goods shall be confiscated and destroyed.
Article
45 Where a trademark is used in contravention of
the provision of Article 13 of the Trademark Law, an interested party may
request the administrative department for industry and commerce for prohibition
of the use. When filing the request, the interested party shall submit proofs
that his trademark constitutes a well-known mark. If the Trademark Office
establishes it as a well-known mark according to the provision of Article l4 of
the Trademark Law, the administrative department for industry and commerce
sha1l order the infringer to cease the act of using the well-known mark in
contravention with the provision of Article l3 of the Trademark Law, confiscate
and destroy the representations of the trademark. If it is difficult to detach
the representations of the trademark from the goods, both the representations
and goods shall be confiscated and destroyed.
Article
46 Where a trademark registrant applies for the
removal, from the Register, of his registered trademark or the registration of
his trademark in respect of a part of the designated goods, he shall send an
Application for Trademark Removal and return the original Certificate of
Trademark Registration to the Trademark Office.
Where
a trademark registrant applies for the removal, from the Register, of his
registered trademark or the registration of his trademark in respect of a part
of the designated goods, the exclusive right in the registered trademark or the
effect thereof on the part of designated goods shall terminate on the date of
receipt by the Trademark Office of the Application for Trademark Removal.
Article
47 Where the registrant of a trademark dies or
ceases, and no formalities have been gone through for transfer of the
registered trademark at the expiration of one year from the date of the death
or cessation, any person is entitled to apply to the Trademark Office for the
removal, from the Register, of the registered trademark. When filing an
application for the removal, he shall submit the proofs of the death or
cessation of the trademark registrant.
Where
a registered trademark is removed from the Register owing to the death or
cessation of the trademark registrant, the exclusive right to use the
registered trademark terminates from the date of the death or cessation of the
trademark registrant.
Article
48 Where a registered trademark is cancelled or
removed from the Register according to the provisions of Articles 46 and 47 of
these Regulations, the original Certificate of Trademark Registration shall
become invalid. Where the registration of the trademark in respect of a part of
the designated goods is cancelled, or where the trademark registrant applies
for removal, from the Register, the registration of the trademark in respect of
a part of designated goods, the Trademark Office shall return, to the
registrant, the original Certificate of Trademark Registration on which the
approval of the cancellation or removal has been marked, or re-issue the
Certificate of Trademark Registration and publish the re-issuance.
Chapter
VII Protection of the Exclusive Right to Use Registered Trademark
Article
49 Where an registered trademark contains the
generic name, shape or model of the goods in respect of which it is used, or
directly indicates the quality, main raw material, function, use, weight,
quantity and other features of the goods, or contains a place name, the holder
of the exc1usive right to use the registered trademark has no right to prohibit
others from duly using it.
Article
50 Any of the following acts shall be an act of
infringement of the exclusive right to use a registered trademark as provided
for in Article 52 (5) of the Trademark Law:
(l)
to use any design which is identical with or similar to the registered
trademark of another person on the same or similar goods, as the designation or
decoration of the goods, which mislead the public; or
(2)
to intentionally provide any other person with such facilities as of storage,
transportation, postal service, and concealment in his infringement of the
exclusive right of another person to use a registered trademark.
Article
51 Where the exc1usive right to use a registered
trademark has been infringed, any person may lodge a complaint with, or file a
report on, the case of infringement to the administrative department for
industry and commerce.
Article
52 An act of infringement of the exclusive right
to use a registered trademark shall be subject to a fine of not exceeding three
times the amount of the illegal business turnover. Where it is impossible to
calculate the amount of the illegal business turnover, the fine shall be no more
than RMB l00,000 yuan.
Article
53 Where a trademark proprietor believes that
another person has registered his well-known trademark as an enterprise name,
which is likely to deceive, or mislead, the public, he may file an application
with the competent authority for the registration of enterprise names for
cancellation of the registration of the enterprise name. The competent
authority for the registration of enterprise names shall handle the matter
pursuant to the Regulations for the Administration of Registration of
Enterprise Names.
Chapter
VIII Supplementary Provisions
Article
54 Where a service mark already in continuous use
up to l July l993 which is identical with or similar to the service mark of
another person already registered in respect of the same or similar services
may continue to be used. However, a mark the use of which has been suspended
for three or more years after l July l993 shall not continue to be used.
Article
55 The specific measures for the administration of
trademark agency shall be separately provided for by the State Council.
Article
56 The classification of goods and services for
the purposes of registration of trademarks shall be formulated and published by
the administrative department for industry and commerce under the State
Council.
The
documents or forms for filing applications for the registration of trademarks
or for attending to other trademark matters shall be formulated and published
by the administrative department for industry and commerce under the State Council.
The
rules for trademark review and adjudication of the Trademark Review and
Adjudication Board shall be formulated and published by the administrative
department for industry and commerce under the State Council.
Article
57 The Trademark Office shall set up the Register
of Trademark Registration for the documentation of registered trademarks and
matters relating to the registration.
The
Trademark Office shall compile, print and distribute the Trademark Gazette to
publish trademark registrations and other related matters.
Article
58 Fees shall be paid for applying for the
registration of trademarks or for handling other trademark matters. The items
and schedule of the fees shall be provided for and published by the
administrative department for industry and commerce under the State Council in
conjunction with the competent price administrative department under the State
Council.
Article
59 These Regulations shall enter into force on l5
September 2002. The Implementing Regulations of the Trademark Law of the
People's Republic of China promulgated by the State Council on l0 March l983,
revised for the first time with the approval by the State Council on 3 January
l988, and revised for the second time with the approval by the State Council on
15 July 1993 and the Answers by the State Council to Issues Relating to the
Attachment of Certificates for the Purpose of Trademark Registration shall
simultaneously be abrogated.
-
Recognition and Administration of
Well-known Trademarks Tentative Provisions
Recognition
and Protection of Well-known Trademarks Provisions
(Promulgated
by the State Administration for Industry and Commerce on 17 April 2003 and
effective as of 1 June 2003.)
Article 1:These Provisions are
formulated in accordance with the PRC, Trademark Law (the Trademark Law)
and the PRC, Trademark Law Implementing Rules (the Implementing Rules).
Article 2:For the purposes of
these Provisions, the term "well-known trademarks" refers to
trademarks that are widely known to the relevant public and enjoy a relatively
high reputation in China.
"The
relevant public" includes consumers related to the type of commodity or
service branded with the trademark, other business operators that produce the
afore-mentioned commodity or provide the service, and sellers and relevant
persons involved in the distribution channel, etc.
Article 3:The following
materials may be evidence to prove that a trademark is well-known:
Article 4: If a party is of the
opinion that the trademark of another person that has been preliminarily
approved and gazetted violates Article 13 of the Trademark Law, he may raise an
objection with the Trademark Office in accordance with the Trademark Law and
its Implementing Rules, and submit the relevant materials proving that
his trademark is well-known.
If
a party is of the opinion that a registered trademark of another person
violates Article 13 of the Trademark Law, he may make a request to the
Trademark Review and Adjudication Board in accordance with the Trademark Law
and its Implementing Rules for a ruling to cancel the registered trademark, and
submit the relevant materials proving that the trademark is well-known.
Article 5:If, in the course of
administration of trademarks, a party is of the opinion that a trademark used
by another person falls within Article 13 of the Trademark Law and requests
protection of his well-known trademark, he may submit a written request to the
administration for industry and commerce of the place where the case occurred
at municipal (district or prefectural) level or above for prohibition of use of
the trademark, and submit the relevant materials proving that the trademark is
well-known, and, at the same time, duplicate the same to the local
administration for industry and commerce at provincial level.
Article 6:After the
administration for industry and commerce has received an application for
protection of a well-known trademark in the course of administration of
trademarks, it shall investigate whether the case falls within the following
circumstances as stipulated by Article 13 of the Trademark Law:
If
the administration for industry and commerce at municipal (district or
prefectural) level deems that a case falls within the afore-mentioned
circumstances, it shall, within 15 working days of the date of acceptance of
the request, submit all the case materials to the administration for industry
and commerce of the province (autonomous region or municipality directly under
the central government) where it is located and issue to the party a notice of
acceptance of the case. The administration for industry and commerce of the
province (autonomous region or municipality directly under the central
government) shall, within 15 working days of the date of acceptance of the
request, submit all the case materials to the Trademark Office. If the
administration for industry and commerce at provincial level of the place where
the party is located deems that the case falls within the afore-mentioned
circumstances, it may also submit it to the Trademark Office.
If
the case is deemed not to fall within the afore-mentioned circumstances, it
shall be handled in a timely manner in accordance with the relevant provisions
of the Trademark Law and its Implementing Rules.
Article 7:The administration for
industry and commerce of provinces (autonomous regions or municipalities
directly under the central government) shall investigate the case materials
related to the protection of well-known trademarks submitted by the
administrations for industry and commerce at municipal (district or
perfectural) level within its jurisdiction.
If
the administration for industry and commerce deems that the case falls within
the circumstances of Paragraph One, Article 6 hereof, it shall report the case
to the Trademark Office within 15 working days of the date of receipt of the
case materials from the administration for industry and commerce at municipal
(district or prefectural) level within its jurisdiction.
If
the administration for industry and commerce deems that the case does not fall
within the circumstances of Paragraph One, Article 6 hereof, it shall return
the relevant materials to the authority that originally accepted the case,
which shall handle it in a timely manner in accordance with the relevant
provisions of the Trademark Law and its Implementing Rules.
Article 8:The Trademark Office
shall make a recognition within six months of the date of receipt of the
relevant case materials, and shall notify the administration for industry and
commerce of the province (autonomous region or municipality directly under the
central government) where the case occurred of the results, and duplicate the
same to the administration for industry and commerce of the province
(autonomous region or centrally-governed municipality) where the party is
located.
The
Trademark Office shall return all case materials, except the materials related
to proving a trademark is well-known, to the administration for industry and
commerce of the province (autonomous region or municipality directly under the
central government) where the case occurred.
Article 9: If a trademark is not
recognized as well-known, the party may not submit a request for recognition of
the same trademark again based on the same facts and grounds within one year of
the date on which the result of recognition is given.
Article 10:When the Trademark
Office or the Trademark Review and Adjudication Board recognizes a trademark as
being well-known, it shall consider all the factors stipulated in Article 14 of
the Trademark Law, but there is no prerequisite that the trademark must satisfy
all the factors stated therein.
Article 11:When the Trademark
Office, the Trademark Review and Adjudication Board and the local
administration for industry and commerce provide protection to a well-known
trademark, they shall consider the prominence of the trademark and the degree
to which it is well-known.
Article 12:When a party requests
that his trademark be protected in accordance with Article 13 of the Trademark
Law, he may submit records showing that the trademark has previously been
protected as a well-known trademark by the relevant Chinese authorities in
charge.
Where
the scope of protection of a case that has been accepted is basically identical
to that of a case in which protection of the well-known trademark has been
granted, and the other party does not dispute that the trademark is well-known,
or although he objects to it, he is unable to provide evidence that the
trademark is not well-known, the administration for industry and commerce that
has accepted the case may render a ruling on or deal with the case on the basis
of the conclusion of the record of protection.
Where
the scope of protection of a case that has been accepted is different from that
of a case in which protection of the well-known trademark has been granted, or
the other party disputes that the trademark is well-known and provides evidence
that such trademark is not well-known, the Trademark Office or the Trademark
Review and Adjudication Board shall re-investigate the materials related to the
well-known trademark and make a recognition.
Article 13:Where a party is of
the opinion that another person has used his own well-known trademark for
registration of enterprise name, and may deceive or confuse the public, he may
apply to the authorities in charge of registration of enterprise names to
cancel the registration of the name of that enterprise. The authorities in
charge of registration of enterprise names shall handle such applications in
accordance with the Administration of the Registration of Enterprise Names
Provisions.
Article 14: All levels of
administration for industry and commerce shall strengthen protection of
well-known trademarks, and shall transfer cases that are suspected of crimes of
counterfeit of trademarks to the relevant departments in a timely manner.
Article 15: The local
administration for industry and commerce of the province (autonomous region or
municipality directly under the central government) where the handling
authority is located shall duplicate the handling decisions of protection of
well-known trademarks to the Trademark Office.
Article 16:All levels of
administration for industry and commerce shall establish the appropriate
supervisory mechanisms and formulate the appropriate supervisory and control
measures in order to strengthen supervision and inspection throughout the
course of work on recognition of well-known trademarks.
Any
relevant personnel participating in the work of recognition of well-known
trademarks who abuses his power, practises graft, seek improper gains or
handles matters relevant to the recognition of well-known trademarks in
violation of the law shall be subject to administrative penalty in accordance
with the law. Where a criminal offence has been constituted, criminal liability
shall be pursued in accordance with the law.
Article 17:These Provisions shall
be effective as of 1 June 2003. The Recognition and Administration of
Well-known Trademarks Tentative Provisions promulgated by the State
Administration for Industry and Commerce on 14 August 1996 shall be repealed
simultaneously.
Supreme
People's Court, People's Courts Subjecting Rights in Registered Trademarks to
Property Preservation Interpretation
(Promulgated
on 2 January 2001 and effective as of 21 January 2001.)
The
following Interpretation concerning relevant issues in people's courts
subjecting rights in registered trademarks to property preservation measures,
is issued in order that property preservation measures against the rights in
registered trademarks are carried out correctly and to avoid duplication of
preservation.
Article 1: When a people's court
adopts property preservation measures pursuant to relevant provisions of the
Civil Procedure Law, and such measures need to be carried out against the
rights in a registered trademark, it shall send a notice to assist in execution
to the Trademark Office of the State Administration for Industry and Commerce
(TMO). The notice shall state the name, registrant and registration certificate
number of the registered trademark against which the people's court is
requesting assistance in execution from the TMO, the term of preservation and
the particulars of the preservation for which assistance in execution is
requested, including such matters as prohibiting the assignment or
deregistration of the registered trademark, the amendment of the registered
particulars, the registration of a pledge of the trademark rights, etc.
Article 2: The term for
preserving the rights in a registered trademark may not exceed six months at a
time. Such term shall run from the date of receipt by the TMO of the notice to
assist in execution. If the preservation measures against the rights in the
registered trademark need to be extended, the people's court shall, before the
expiration of the term of preservation, send a new notice to assist in
execution to the TMO, requesting that it extend the term of preservation.
Otherwise, the rights in the registered trademark shall be deemed to have been
automatically released from the property preservation measures.
Article 3: The People's Court may not duplicate preservation measures against the rights in a registered trademark that are already subject to preservation.