Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases (2019)

10. Application of Article 12 of the Trademark Law

10.1 Functions of three-dimensional marks

If the three-dimensional mark which the party concerned applies for registering as the trademark is composed only of a shape arising from the characteristics of the goods or a shape of the goods required to obtain technical results or a shape which gives the goods substantial value, then this mark may be determined to fall under the circumstances provided in Article 12 of the Trademark Law, without considering the use of such three-dimensional mark.

10.2 A shape arising from the characteristics of the goods

The shape which must be adopted or generally adopted in order to obtain the inherent purposes, functions, uses, effects and others of the goods shall be the shape arising from the characteristics of the goods.

10.3 A shape required to obtain technical results of the goods

The shape necessary to achieve the specific technical parameters, indicators and others shall be the shape of goods required to obtain technical results.

10.4 A shape which gives the goods substantial value

The appearance, shape and others of the goods which affect the consumers’ willingness to purchase shall be the shape which gives the goods substantial value.

11. Application of Article 13 of the Trademark Law

11.1 Proof of the well-known trademarks

If a party concerned claims that a prior trademark constitutes the well-known trademark, it shall generally submits the evidence that this trademark has been in the well-known state prior to the date of application for the trademark in dispute. If the evidence, formed after the date when a party concerned files an application for the trademark in dispute, is sufficient to prove that the prior trademark has been in the well-known state prior to the date of application for the trademark in dispute, this evidence may be accepted.

11.2 Protection of the well-known trademarks

The application of the provisions of Article 13.3 of the Trademark Law shall take into account the following prerequisites: (1) a reference trademark has been in the well-known state prior to the date of application for the trademark in dispute; (2) a trademark in dispute constitutes a replication, imitation or translation of a well-known trademark; and (3) the registration of a trademark in dispute easily misleads the public, as a result of which the interests of the owner of the well-known trademark are damaged. If any of prerequisites as set out in the preceding paragraph is not met, it is not necessary to identify other prerequisites.

11.3 Protection scope of the well-known trademarks

The determination of the protection scope of a well-known trademark may comprehensively take into account this trademark's distinctiveness, popularity, the similar degree of marks of the trademarks, the details of goods designed, the degree of overlap and attention of the relevant public, the subjective state of the applicants of the trademark in dispute and other factors.

11.4 Applicable circumstances of Article 13.3 of the Trademark Law

The following circumstances shall belong to those provided in Article 13.3 of the Trademark Law: (1) an application for registration of a trademark in dispute on non-identical or dissimilar goods is a replication, imitation or translation of a reference trademark, which is sufficient for the relevant public to misidentify the source of the goods using the reference trademark and the trademark in dispute or believe that there are specific relations such as the licensed use and affiliates between the business dealers using the reference trademark and the trademark in dispute; and (2) an application for registration of a trademark in dispute on non-identical or dissimilar goods is a replication, imitation or translation of a reference trademark, which is sufficient for the relevant public to believe that there is a considerable degree of relations between the trademark in dispute and the reference trademark to weaken the distinctiveness of, derogate or improperly use the market reputation of the reference trademark.

11.5 Well-known state

A prior trademark may not be determined to have been in the well-known state under any of the following circumstances: (1) a party concerned has a long history of operations and high popularity, but fails to prove that the prior trademark has been well known by the relevant public in China; or (2) the prior trademark has high popularity in other countries or territories, but fails to be well known by the relevant public in China pursuant to the actual use prior to the date of the application for the trademark in dispute.

11.6 Determination of replications, imitations or translations

If the mark of the trademark in dispute is identical with or has no visual difference basically with that of another person's well-known trademark, this trademark in dispute shall constitute a replication.

If the mark of the trademark in dispute uses any distinctive part or characteristics of another person's well-known trademark, this trademark in dispute shall constitute an imitation. If another person's well-known trademark is expressed in the mark of the trademark in dispute in a different language which has established a corresponding relation with another person’s well-known trademark and is widely known or usually used by the relevant public, this trademark in dispute shall constitute a translation.

11.7 Rule Conversion of the well-known trademarks

Subject to the following conditions, if TRAD makes a disputed ruling by applying Article 30 or 31 of the Trademark Law and supports the application made by the party concerned, where the party concerned claims that TRAD wrongly applies legal provisions, then this claim shall not be supported: (1) the application for registration of a trademark in dispute made by the party concerned on the identical or similar goods pursuant to the provisions of Article 13.3 of the Trademark Law is not approved or is declared invalid; (2) the party concerned does not expressly claim that the application for registration of a trademark in dispute violates the provisions of Article 30 or 31 of the Trademark Law; (3) the substantial reason why the application for registration of a trademark in dispute by the party concerned is not approved or is declared invalid is that the relevant public might well confuse the sources of goods designed by the trademark in dispute and the reference trademark; (4) the party concerned claims that the application for invalidation of the trademark in dispute does not exceed the five-year period provided in Article 45.1 of the Trademark Law.

11.8 Protection of the registered well-known trademarks on the identical category of goods

If a trademark in dispute exceeds more than five years since its registration, and the owner of a well-known trademark claims that the trademark in dispute on the identical or similar goods should be declared invalid pursuant to the provisions of Article 13.3 of the Trademark Law, then this claim may be supported.

12. Application of Article 15 of the Trademark Law

12.1 Determination of “without authorization” 

If a principal or an entrusting party does not explicitly express its intention to agree its agent or representative to apply for registration of the trademark in dispute, this circumstance shall be “without authorization” provided in Article 15.1 of the Trademark Law. If a principal or an entrusting party is aware of the application for registration of the trademark in dispute, meanwhile does not raise any objection, then the principal or the entrusting party may not be generally presumed to agree its agent or representative to apply for the trademark in dispute.

12.2 “Trademarks of the principal or the entrusting party” 

The trademark already registered or applied for by the principal or the entrusting party prior to the date of application for the trademark in dispute is not “a trademark of the principal or the entrusting party” provided in Article 15.1. Whether the principal or the entrusting party actually uses this trademark is not a prerequisite of determination by Article 15.1 of the Trademark Law.

12.3 Applicable prerequisites

If the trademark which is applied for registration by the agent or the representative without authorization and its designated goods are identical with or similar to the trademark of its principal or entrusting party and the designated goods, then this is one of circumstances provided in Article 15.1 of the Trademark Law.

12.4 Applicable subjects

If an applicant of the trademark in dispute has family ties with “the agent or the representative” provided in Article 15.1 and “the applicant” provided in Article 15.2, or is the legal representative of the company to which “the agent or the representative” or “applicant”belongs, this applicant constitute an applicable subject provided in Article 15 of the Trademark Law.

12.5 Judgment of “earlier used” 

If a trademark is used only in other countries or regions, this use does not fall under the “earlier used” circumstances provided in Article 15.2 of the Trademark Law. The scale, time and the popularity of use of the trademark and other factors do not affect the judgment of the “earlier used”.

12.6 Judgment of the evidence of “earlier used” 

If a party concerned claims to protect the “earlier used” trademark, it shall submit the evidence of this trademark use in China prior to the date of application for the trademark in dispute, and the evidence of this trademark use in other countries or regions or of such trademark to be used in China may be in addition to the proof of “earlier used”.

12.7 Determination of “other relations” 

If an applicant of the trademark in dispute has with a prior user any relation (other than the agency or representative relation) that the applicant is able to be aware of existence of another person’s trademark and should actively avoid same, this relation falls under the circumstances of “other relations” provided in Article 15.2.

12.8. Exceptions to Article 15 of the Trademark Law

If an applicant of the trademark in dispute can prove by evidence that it firstly uses the trademark in dispute before the formation of the agency or representative relation, it may be determined to fall outside the circumstances provided in Article 15.1 of the Trademark Law. If an applicant of the trademark in dispute can prove by the evidence that it uses the trademark in dispute earlier than “another person” provided in Article 15.2, it may be determined to fall outside the circumstances provided in Article 15.2. 

photo from: Beijing High People's Court