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

18. Application of Article 45 the Trademark Law

18.1 Attributes determination of Article 45 of the Trademark Law

The first, second and third paragraphs of Article 45 of the Trademark Law are procedural clauses.

18.2 Determination of “five-year period” 

The “within five years from the date of trademark registration” provided in Article 45.1 of the Trademark Law means the five-year period following the date when the registration of the trademark in dispute is announced, and this period shall not apply to the suspension, interruption and others.

From the next date of announcement of the registration of the trademark in dispute, the applicant may file an application for invalidation pursuant to the provisions of Article 45.1 of the Trademark Law.

18.3 Applicants of beyond the “five-year” period

The “owners of well-known trademarks” provided in Article 45.1 of the Trademark Law do not cover the interested parties of the well-known trademarks.

18.4 Determination of “malicious registration” 

The determination of “malicious registration” provided in Article 45.1 of the Trademark Law may take into account the following factors: (1) the trademark in dispute is highly similar to the prior well-known trademark; (2) the prior well-known trademark has higher distinctiveness and popularity; (3) the goods designated by the trademark in dispute are highly connected with the prior well-known trademark; (4) the applicant of the trademark in dispute has trade dealings or cooperation with the owner of the prior well-known trademark; (5) the applicant of the trademark in dispute and the owner of the prior well-known trademark are at the same territory; (6) other disputes occurred between the applicant of the trademark in dispute and the owner of the prior well-known trademark, which sufficiently enable the applicant to know this trademark in dispute; (7) the applicant of the trademark in dispute has internal personnel exchanges with the owner of the prior well-known trademark; (8) after the applicant of the trademark in dispute applies for registration of such trademark, the applicant attaches such trademark to the good will of the prior well-known trademark; (9) the applicant of the trademark in dispute applies for registration of a large number of trademarks of others with higher distinctiveness and popularity.

19. Application of Article 49.2 of the Trademark Law

19.1 Judgment of generalization of registered trademarks

When determining whether a trademark in dispute is the generic name of the goods, the mark of the trademark shall be examined as a whole, and the specific goods designated by the generic name shall be determined, without considering the commodities similar to such goods. If a party concerned claims that the trademark in dispute becomes a generic name of the goods, it may prove its claim by submitting the evidence such as dictionaries, reference books, national or industrial standards, the certificates issued relevant industrial organizations, market research reports, publicity and use on the market and the use of the mark of such trademark by other manufacturers of the identical goods.

19.2 Time point judgment of generalization of registered trademarks

When determining whether the trademark in dispute is a generic name, this determination shall be generally judged from the status of facts when the party concerned applies for revocation with the trademark cancellation review department, with the status of facts at the time of review as reference.

19.3 Application of new and old laws

In an administrative case of review of revoked trademark rights, if the designated three-year period straddles May 1, 2014, the Trademark Law revised in 2001 shall apply in terms of substantive law.

19.4 Determination of the use

If a party concerned claims to maintain the registration of the trademark under any of the following circumstances, this claim shall not be supported: (1) where the party concerned only uses the trademark in dispute on the similar goods or services beyond the approved scope; (2) where the party concerned uses the trademark in dispute, but fails to play a role in distinguishing the sources of goods orservices; or (3) where the party concerned symbolically and accidentally uses the trademark in dispute for maintaining registration of such trademark.

19.5 Determination of “illegal” use

If the trademark use clearly violates the provisions on prohibition use of the Trademark Law and other laws, this use may not be determined as the trademark use.

19.6 Determination of use subjects

For the “has not been used for three years consecutively” provided in Article 49.2 of the Trademark Law, the “use” subjects include the trademark owners, trademark licensees and any other persons whose use does not violate the use willingness of the trademark owner. If a trademark owner has explicitly expressed that it does not recognize the use of the trademark in dispute by another person, but recognizes such use in an administrative case of review of revocation of trademark rights, this circumstance may not be determined as the “use”.

19.7 Determination of nonstandard goods

If the actually used or approved goods are not the titles of standard goods or services provided in the Similar Goods and Services Classification Table, the determination of the category of the specific goods shall comprehensively take into account those goods’ functions, use, production department, consumption channels and consumer groups as well as the effects of the market factors (including consumption habits, production patterns, industry management needs) on the nature or title of the goods.

19.8 Determination of actually used nonstandard goods constituting the use of the approved goods

If actually used goods are not the titles of standard goods or services provided in the Similar Goods and Services Classification Table, but such goods are the identical with those approved by the trademark in dispute, both categories of goods are different only in name, or the actually used goods belong to the subordinate concept of the approved goods, this use may be determined to the use of the approved goods. The determination of the identical goods may comprehensively take into account the physical attributes, commercial features and the principles and standards of the Similar Goods and Services Classification Table on the goods classification and other factors.

19.9 Maintenance of trademark registration scope

If a trademark in dispute on the approved goods constitutes the use, the registration of the trademark on other approved goods similar to such goods may be maintained. The similar goods referred to in preceding paragraph shall be judged strictly in accordance with the functions, use, production department, consumption channels and consumer groups of goods, and generally determined according to the Similar Goods and Services Classification Table.

19.10 Effect of classification table changes on judgment of similar goods

If the goods approved but not actually used are dissimilar to the actually used goods according to the Similar Goods and Services Classification Table when the registration of the trademark in dispute is approved, but two categories of goods are similar at the time of the case trial due to the changes in the Similar Goods and Services Classification Table, then the registration of the goods not actually used may be maintained by taking the status of the facts at the time of the case trial as the basis. If the goods approved but not actually used are similar with the actually used goods according to the Similar Goods and Services Classification Table when the registration of the trademark in dispute is approved, but two categories of goods are dissimilar at the time of the case trial due to the changes in the Similar Goods and Services Classification Table, then the registration of the goods not actually used may be maintained by taking the status of the facts at the time of registration approval as the basis.

19.11 Determination of trademark in dispute attached to the others’ trademarks

If the goods using the trademark of another person is affixed with the trademark in dispute, and it is difficult for the relevant public to identify such goods from the registrant of the trademark in dispute, this circumstance may not be determined as the use of trademark. 19.12 Determination of the identical goods with multiple trademarks

If a registrant of the trademark in dispute uses more than one trademark including the trademark in dispute on the identical goods at the same time, and the relevant public can take such trademark as the mark distinguishing the sources of goods, this circumstance may be determined as the use of trademark.

19.13 Determination of one registrant having multiple trademarks

If a registrant of the trademark in dispute has more than one registered trademark, there are only minor differences between its actually used trademark and the trademark in dispute, but where this use can be determined to be the other registered trademarks of theregistrant, the registration of the trademark in dispute may not be maintained.

19.14 Determination of the use of trademarks on the services of “sales promotion for others” 

If a registrant of the trademark in dispute is a shopping mall, a supermarket or otherwise, can prove that it cooperates with the sellers by offer of the site or other means, and sufficiently confirms that it provides advice, planning, publicity, consultation and other services for selling the goods, then the trademark in dispute may be determined to be used on the services of “sales promotion for others” 

19.15 Use after the specified period

If a registered trademark is used in a large-scale manner after the specified period, this use will not constitute the use of trademark within the specified period in general. However, if there is little evidence that the party concerned uses the trademark within the specified period, and the trademark in dispute is used continuously and extensively after the specified three year, the above factors may be comprehensively taken into account to judge whether to constitute the use of trademark.

19.16 Determination of pure export behavior

If the goods using the trademark in dispute are directly exported without being circulated in China, and the registrant of the trademark in dispute claims to maintain the registration of such trademark, this claim may be supported.

Supplementary Provisions

These Guidelines shall be implemented from the date of their issuance, and the Guidelines of Beijing High People's Court on Trial of Administrative Cases of Trademark Right Granting and Verfication issued on January 22, 2014 shall not apply. 

photo from: Beijing High People's Court