Use of the R in a Circle Registration Symbol in China for Trademarks
Under the current Chinese legal framework, it is not mandatory for individuals or entities to register trademarks with the China Trademark Office (“CTO”) for goods and/or services for which they are provided, unless specified otherwise by certain laws or regulations, for example, under Article of the Law of the People’s Republic of China on Tobacco Monopoly, tobacco products shall use a registered trademark.
Therefore, it is acceptable to use an unregistered mark in China; however, such use will have restrictions attached, including the following:
In accordance with Article 52 of the PRC Trademark Law, where a party passes off an unregistered trademark as a registered one, or uses an unregistered trademark in violation of Article 10 of this Law, the local administrative department for industry and commerce shall stop the use of the trademark, order rectification of the situation within a specified period and may, in addition, circulate a public notice on the matter. Where the illegal gains exceeds RMB50,000, a fine up to 20% of the illegal gains may be imposed; where there are no illegal gains or the illegal gains are less than RMB50,000, a fine up to RMB10,000 may be imposed.
Therefore, based on Article 52, an individual or an entity who marks an unregistered trademark as a “registered trademark”, or marks on a product with the characters “注册商标（registered trademark）”, or the symbol “®” will be deemed passing off an unregistered trademark for a registered trademark. In addition, if an unregistered trademark falls within the categories provided under Article 10 of the Trademark Law, where it prohibits certain marks to be used as trademarks, such as a trademark identical with or similar to the State name, national flag, national emblem, national anthem, military flat, and many more, the use of the unregistered trademark will constitute a violation of Article 52.
In cases of Article 52 violations, the local administrative department for industry and commerce (the “AIC Bureau”) are responsible for the investigation and punishment of the offender. There have been many reported cases of Article 52 violations in various provinces across China, which are detailed below:
1. The Beijing AIC Bureau made orders of rectification and imposed a fine against a company who had used “®” in association with an unregistered trademark on washing products. According to the BAIC, this company used a word mark with “®” symbol on products, such as washing machines etc. The said used mark was applied for registration to the CTO by the company; however, the mark was not approved for registration yet.
2. The AIC Bureau of Xishui County, Hubei Province made orders of rectification and imposed a fine of RMB 100,000 Yuan against a biology technology company for printing an unregistered trademark on the packages of agricultural products.
On January 8, 2015, the AIC Bureau of Xishui County found that there were suspicious registered trademarks using on natural organic fertilizer products sold in a supermarket. Upon investigation, the manufacturer of the said fertilizer products is a biology technology company. According to the CTO database, the CTO had accepted the company’s trademark application for registration and issued the Acceptance Notice. However, there was no evidence showing that the company had obtain the Trademark Registration Certificate. It is reported that the packages bearing with the fake registered trademarks were worth of RMB 45,000 Yuan, the volume of involved products were 750 tons and worth of RMB 550,000 Yuan.
3. The AIC Bureau of Huangpu District, Shanghai imposed a fine of RMB 480,000 Yuan against a bakery shop for using an unregistered trademark “TOP POT BAKERY” as a registered trademark during business operations. Although the total amount of illegal gain amounted to more than RMB 9,710,000 Yuan, the fine was made in accordance with the relevant articles under the Implementation Rules of the Trademark Law, which stated such an offence amounted to a fine of no more than 20% of the volume from the illegal business operations. Furthermore, the AIC Bureau took into consideration several factors, including the fact that the relevant trademark was in the process of registration, and there was willing and accommodating coordination from the bakery shop with the AIC Bureau, therefore contributing to a lesser punishment and a fine approximately 5% of the total illegal gain imposed.
4. The AIC Bureau of Suizhou, Hubei Province made orders of rectification and imposed a fine of RMB 100,000 Yuan against a clothing company for manufacturing clothing with the unregistered trademarks “LENTINOR” and “BTBR”. It is said that the clothing company was manufacturing cotton short pants marked with registered trademarks “LENTINOR” and “BTBR” for Guangzhou Hua Hai Clothing Company. By the time of investigation, the said clothing company had manufactured 5,960 pieces of pants, 3,160 pieces with “LENTINOR” and 2,500 pieces with “BTBR”. The amount of money involved was RMB 80,640 Yuan. According to the local AIC Bureau, the said clothing company did not check and verify the registration information of the Guangzhou company and passed off unregistered trademarks as registered trademarks.
5. The local AIC Bureau in Xinjiang imposed a fine amount of RMB 49,000 Yuan against an individual for using an unregistered trademark with the “®” symbol on toilet paper products. While the individual applied for registration, it was rejected due to a similar prior registered mark. Nevertheless, the individual continued to use the unregistered mark with the “®” symbol, and sales eventually amounted to over 300,000 Yuan.
In conclusion, only a trademark registrant has the right to mark their trademark with "registered trademark" or the “®” symbol to indicate the trademark is registered. However, the owner of an unregistered trademark must not indicate in any way that the unregistered trademark is registered, or such owner may face a fine imposed by the local AIC Bureaus.
Relevant Articles of the Trademark Law
Article 9.2 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, national anthem, military flag, military emblem, military anthem or decorations and the like, of the People's Republic of China, with names and marks of the Central and State organs, 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 intergovernmental 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 fraud in advertising goods, easy to cause confusion in public in goods’ character, such as quality, or origin of the 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 52 Where a party passes off an unregistered trademark as a registered one, or uses an unregistered trademark in violation of Article 10 of this Law, the local administrative department for industry and commerce shall stop the use of the trademark, order rectification of the situation within a specified period and may, in addition, circulate a public notice on the matter. Where the illegal gains exceeds RMB50,000, a fine up to 20% of the illegal gains may be imposed; where there are no illegal gains or the illegal gains are less than RMB50,000, a fine up to RMB10,000 may be imposed.
ABOUT THE AUTHOR: Fei Dang
Fei Dang is an Associate in the MMLC Group in Beijing,
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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.