The following content is distilled from "FAQ on Key Issues of Evidence in Trademark Rejection Review Cases." It retains the core guiding principles and evidence directions, with all specific evidence examples removed. This version aims to provide international applicants who are unfamiliar with China's trademark prosecution system with clear, actionable guidance on evidentiary strategies, including explanations of relevant Chinese legal contexts.
Q1: From which aspects can an applicant submit evidence to prove that the trademark application is not a "malicious application not for the purpose of use"?
A: The China National Intellectual Property Administration (CNIPA) actively combats trademark hoarding and bad faith registrations. To prove a genuine intent to use, applicants should submit comprehensive evidence from the following aspects, as no single piece of evidence is usually sufficient:
1. Applicant's Business Profile: Evidence of main business operations, industry attributes, actual business activities, and industry standing (e.g., company introduction, business scope certification, industry reports).
2. Overall Trademark Portfolio: The applicant's overall trademark registration strategy and recent filing activities, demonstrating a logical and legitimate commercial portfolio.
3. Rationale for Goods/Services Selection: Evidence showing that the chosen goods/services align with the applicant's long-term business development plans and have a logical connection to its core operations or expansion strategy.
4. Actual Use or Demonstrable Intent to Use: Evidence of actual commercial use of the applied-for trademark on the designated goods/services, or concrete preparations for such use.
5. Necessity and Urgency: Evidence demonstrating a need for trademark protection, such as records of prior infringement cases or opposition actions against copycat trademarks.
6. Reference to Precedent Cases: Citing conclusions and reasoning from similar prior review cases as persuasive support.
Q2: What evidence can an applicant submit to prove a genuine intent to use the applied-for trademark?
A: To establish a bona fide intent to use, applicants can submit evidence related to concrete preparations, such as:
1. Business Plans: Commercial plans, feasibility reports, or internal decision-making documents (e.g., board meeting minutes, internal emails) regarding the goods/services intended for the trademark.
2. Product/Service Development Preparations: Evidence related to development, manufacturing, prototyping, packaging design, trademark printing, product testing, patent/software copyright applications, etc.
3. Procurement and Support Preparations: Evidence of sourcing components, installing equipment, leasing premises, or store design related to the intended goods/services, etc.
4. Regulatory Compliance Preparations: Evidence of obtaining necessary qualifications, permits, or licenses required for the goods/services, or preparatory work toward obtaining them.
5. Distribution Preparations: Evidence of negotiations or agreements with distributors, agents, or retailers concerning the intended trademarked goods/services.
6. Advertising and Promotion Preparations: Evidence of marketing plans, advertising materials, social media campaign preparations, or agreements for promotional activities.
Q3: What types of evidence related to intent-to-use are easily deemed lacking in probative value or inadmissible?
A: Evidence is often found insufficient if it cannot be corroborated to form a coherent chain. Common pitfalls include:
1. Evidence related to other trademarks owned by the applicant, or use/intent related to goods/services unrelated to those designated in the application.
2. Evidence showing the mark used in a non-trademark manner (e.g., on office supplies, staff uniforms) unconnected to the designated goods/services.
3. Evidence of general business activities (e.g., recruitment contracts, office leasing) that cannot be reasonably linked to the applied-for trademark or its goods/services.
4. Evidence of public welfare activities that do not feature the applied-for trademark or its designated goods/services.
5. Other unrelated evidence, such as records of visits or exchanges that do not involve the trademark or its goods/services.
Q4: If the applied-for trademark is rejected for being similar to a foreign country name, what evidence can be submitted in a review?
A: 1. General Scenario: Submit documentation proving that the trademark application has been approved for registration by the government of that country, or that an identical trademark is already registered there. The applicant, trademark sign, and goods/services must be consistent between the Chinese application and the foreign registration/document. Foreign documents require certified translations.
2. Special Scenario: For countries like Switzerland, where domestic registration does not automatically imply government authorization for use abroad, the foreign registration certificate alone is insufficient. Applicants must submit explicit written authorization materials issued by the competent national authority (e.g., the Swiss Federal Institute of Intellectual Property) along with relevant agreements, agreeing to the trademark's registration in China.
Q5: What evidence is needed when a trademark is rejected under Article 10.1(7) of the Trademark Law (likely to cause public confusion)?
A: This rejection ground aims to prevent trademarks that could deceive consumers about the source, quality, characteristics, or place of origin of the goods or services. The specific evidence required depends entirely on the nature of the potentially misleading element within your mark.
For a trademark containing an enterprise name that differs from the applicant’s official name, evidence must show the mark points uniquely to the applicant. Acceptable proof includes legally registered subject qualification documents such as a business license, as well as materials like advertisements, product sales records, media reports, or honors that demonstrate the abbreviated name has formed an exclusive correspondence with the applicant in the course of actual production and operation.
When a trademark contains descriptive words or graphics indicating the raw materials, ingredients, functions, or uses of the designated goods, evidence must show the description is objectively accurate for the specifically limited goods, and that the applicant has submitted a written statement disclaiming the exclusive right to the non-distinctive part. Supporting evidence may include purchase or processing contracts for product materials with corresponding invoices, product manuals, formulation/composition lists, product test reports issued by authoritative third-party institutions, or evidence showing the product has gained a certain market reputation through use and promotion.
If the trademark contains elements identical or similar to a public figure’s name or portrait, the applicant must submit evidence of clear authorization from the rights holder. This evidence typically consists of the rights holder’s identity document and a letter of authorization agreeing to the registration of the applied-for trademark.
The core principle throughout is to demonstrate, through the submission of the relevant evidence listed above, that the registration and use of the trademark will not mislead the public regarding the source or characteristics of the goods or services.
Q6: What evidence can be submitted if a trademark containing "China" as part of an enterprise abbreviation is rejected?
A: The registration of trademarks containing “China” is strictly regulated. According to the Trademark Examination and Review Guidelines, if such a mark is not deemed identical or highly similar to the country name as a whole but may potentially harm national dignity, it is typically rejected under Article 10.1(8). To overcome this rejection, the applicant must conclusively prove that all of the following four conditions are met, supported by corresponding evidence.
First, the applicant must have been established with the approval of the State Council or an authorized body. Second, the applicant's full name must be legally registered with the name registration authority. Third, the trademark itself must be identical to the officially approved abbreviation of the applicant's name, which also requires approval from the State Council or its authorized body. Fourth, the trademark must have been used extensively and consistently by the applicant over a long period, to the extent that it has formed an exclusive and well-established association with the applicant in the perception of the relevant public.
Evidence to substantiate these conditions includes, but is not limited to: (1) the applicant’s legally registered subject qualification certificates, such as a business license; (2) official documents proving the applicant’s establishment was approved by the State Council or its authorized body; (3) official documents proving the enterprise abbreviation was approved by the State Council or its authorized body; and (4) evidence capable of proving the applied-for trademark has been used extensively and has formed an exclusive correspondence with the applicant.
Q7: What evidence can be considered if a trademark is rejected for being identical to a martyr's name?
A: Rejection is based on potential "detrimental influence." Evidence for exceptions includes:
1. The Mark Has Another Established Meaning: Evidence proving the words have a well-known, primary meaning unrelated to the martyr (e.g., dictionary entries, geographical names).
2. The Mark is the Applicant's Own Name or Trade Name: For individuals: ID card. For entities: business registration certificates proving the name is their legally registered trade name or abbreviation, with evidence of long-term use and public recognition.
3. No Direct Association with a Specific Martyr: Evidence showing the mark clearly refers to another specific individual (e.g., a historical figure, an expert) or concept, preventing association with the martyr.
Q8: What evidence can be submitted for a trademark rejected due to "non-standard Chinese characters"?
A: Submit evidence proving the character form is:
· A permissible variant or traditional Chinese character, or
· A stylized calligraphic or artistic design where the graphical treatment does not lead the relevant public to mislearn or misuse the standard form of the Chinese character.
Q9(A): If a trademark is rejected for "detrimental influence" due to its wording, can submitting proof of an alternative meaning overcome the rejection?
A: Generally, no. Assessment is based on the perception of the relevant public in China. If, in the context of the designated goods/services, the public is more likely to perceive a detrimental meaning or connotation, the mark will be rejected even if it possesses other meanings.
Q9(B): If a trademark is rejected for "detrimental influence" due to a foreign word, can proving the meaning is obscure in China overcome the rejection?
A: No. If the foreign word has a detrimental meaning (e.g., refers to illegal drugs, offensive terms), it is prohibited from registration regardless of its level of recognition among the Chinese public.
Q10: What evidence can be submitted for a trademark rejected under Article 10.2 (prohibition of county-level+ geographical names)?
A: Evidence must support one of the following exceptions:
1. The Name Has Another Stronger Meaning: Provide authoritative references (dictionaries, literature) proving the term has a well-known meaning that outweighs its geographical signification (e.g., "Shangri-La").
2. The Mark as a Whole Has a Stronger Meaning: Provide evidence (extensive use, media coverage) demonstrating that the entire mark, through use, has acquired a distinct meaning stronger than the geographical name and is uniquely associated with the applicant.
3. The Name is Used Independently and Merely Indicates Location: Provide proof of the applicant's legitimate location, and show that the geographical name is separate from other distinctive elements in the mark and serves only to truthfully indicate the applicant's origin.
Q11: From which aspects can an applicant submit evidence to prove the trademark has acquired distinctiveness through use?
A: A combination of evidence is required to demonstrate substantial and recognized commercial use:
1. Evidence of Actual Use/Sales: Contracts, invoices, financial audit reports, tax records, e-commerce platform data, sales figures, duration, and geographical scope of sales.
2. Evidence of Advertising and Promotion: Records of advertising across media (TV, print, online), participation in exhibitions, sponsorships, celebrity endorsements, social media metrics, and media reports.
3. Other Supporting Evidence: Industry awards, rankings, market research reports, consumer survey results, and records of successful trademark enforcement.
Q12: What evidence is easily deemed ineffective in proving acquired distinctiveness?
A: In a review case, all submitted evidence must satisfy the requirements of legitimacy, authenticity, and relevance. Evidence that fails to prove the applied-for trademark has acquired the necessary distinctive character through actual commercial use typically falls into the following categories, all of which are considered ineffective.
First, evidence that does not demonstrate use of the applied-for trademark itself. This includes materials that show no trademark use at all, or evidence of use related to a completely different or only vaguely similar trademark owned by the applicant. For instance, evidence of honors or awards received by the applicant company merely indicates its economic strength or industry status but has no necessary connection to whether the specific applied-for trademark has been put to genuine use. Such evidence fails to show that the trademark in question has functioned to distinguish the source of the goods.
Second, evidence where the applied-for trademark is used only in combination with another trademark, making it difficult to prove it has acquired distinctiveness on its own. In such cases, consumers are more likely to recognize the other, dominant trademark as the primary source identifier. They may perceive the applied-for mark merely as an advertising slogan or decorative element, rather than as an independent brand. Therefore, this type of evidence cannot establish that the applied-for trademark alone has gained the capacity to identify the commercial source through use.
Third, evidence that is isolated and not corroborated by other materials to form a complete chain of proof. Self-generated evidence, such as standalone product photographs or simple sales page screenshots without supporting documentation like corresponding invoices, sales orders, or shipping records, is considered weak. Without a verifiable chain of evidence proving the goods have entered the actual stream of commerce, such materials are insufficient to demonstrate that the trademark has achieved the public recognition required for acquired distinctiveness.
The fundamental requirement is to provide coherent and mutually supporting evidence that clearly demonstrates the applied-for trademark has been used publicly, honestly, and consistently on a commercial scale, and that as a result, it has become capable of distinguishing the applicant’s goods or services in the minds of the relevant public.
Q13: What evidence can an applicant submit to prove eligibility for registering a Geographical Indication (GI) trademark?
A: The applicant must be a non-profit organization (association, society) whose business is related to the GI product. Submit proof such as a "Social Organization Legal Person Registration Certificate" or "Institution Legal Person Certificate." Foreign applicants can submit proof that the GI is legally protected in their home country.
Q14: What evidence proves the applicant's authority to apply for and supervise a GI trademark?
A: For domestic applicants: an approval document from the county-level or higher people's government or competent authority, explicitly authorizing the applicant to register and supervise the GI. For foreign applicants: proof that the GI is legally protected in their name in the country of origin.
Q15: What evidence proves the applicant's capability to supervise and inspect the specific qualities of the GI product?
A: Applicants must prove they can ensure the GI product's specific qualities. Evidence depends on who performs the inspection.
For self-inspection, submit the applicant’s own inspection qualification certificates, personnel lists, and equipment inventories.
For inspection by a third party, submit a valid entrustment inspection agreement that specifically mandates checking the product’s specific qualities, along with the third-party agency’s qualification certificates, personnel lists, and equipment inventories.
All documents must be officially stamped by the issuing party.
Q16: What evidence proves the defined geographical area of production for the GI product?
A: Submit official local chronicles, yearbooks, product records, or government-issued documents that clearly, precisely, and specifically define the geographical boundary. This definition must be consistent with the GI trademark's usage rules.
Q17: What evidence proves the specific qualities of the GI product?
A: The GI usage rules must describe the product's specific sensory, physical/chemical characteristics, or production methods. The description should include both qualitative statements and quantifiable indicators.
Q18: What evidence proves the causal link between the product's qualities and its geographical origin?
A: Provide a detailed explanation of how specific natural factors (soil, climate, water) or human factors (traditional skills, techniques) determine the product's specific qualities. The explanation should be clear and specific about the cause-and-effect relationship.
Q19: What evidence proves the historical existence and reputation of the GI?
A: Submit publicly published materials (books, national-level professional journals, ancient texts) that clearly document the GI name, its specific qualities, and its reputation.
Q20: How should an applicant designating China for GI protection under the Madrid System submit evidence in a review proceeding?
A: For an international registration seeking territorial extension to China for a GI mark, the applicant must submit the required documents to the CNIPA International Department within three months from the date of the mark's entry into the International Register. If this was not done, the evidence must be submitted during the review proceeding.
The core documents required include the applicant's subject qualification proof and the rules for use and control of the GI mark. Proof that the GI is protected by law in the applicant's country of origin can serve as preliminary evidence for the constituent elements of the GI.
Important Procedural Update: As of November 7, 2023, the Apostille Convention has entered into force in China. For applicants from member states that did not object to China's accession, public documents submitted to China are now exempt from legalization (apostille) requirements.
For applicants from non-member states or from member states that objected to China's accession, all relevant foreign-generated documents—including subject qualification proof, proof of legal protection in the country of origin, proof of the right to supervise the GI, and proof of inspection capability—must still undergo the required legalization process before submission.
Q21: How is a "trademark agency" defined in review cases?
A: It includes entities filed with the CNIPA as trademark agencies, as well as any market entity whose business scope includes items clearly indicating trademark agency services (e.g., "trademark agency," "intellectual property agency," "trademark registration services").
Q22: If an applicant's business scope included "trademark agency" at the time of filing but was later removed, can Article 19.4 (restricting agency registrations) be avoided?
A: No. The determination is based on the business scope at the time of the trademark application. Subsequent changes are not considered.
Q23: If a trademark applied for by an agency is later assigned to a non-agency, can Article 19.4 be overcome?
A: No. To avoid Article 19.4, both the original applicant (assignor) and the assignee must not be trademark agencies. Evidence (business licenses) must prove this status was true from the application date through the review proceeding.
Q24: What are the "agency services" that a trademark agency can apply to register under Article 19.4?
A: Only services within Class 4506 of the Nice Classification ("Legal services; etc."), which corresponds to services like intellectual property agency, legal consultation.
Q25 & Q26: What are the common issues and solutions for a Madrid international trademark application rejected under Article 22 (Specification of Goods/Services)?
A: Article 22 rejections mainly affect Madrid international registrations entering China, often due to non-compliant goods/services descriptions.
Common Issues:
· Vague terms that cannot be classified (e.g., “pharmaceuticals” without specifying human/veterinary use).
· Items in currently unaccepted categories in China (e.g., retail services in Class 35, gambling-related items, certain virtual/NFT goods).
Solutions in Review:
1. Modify the List: File a “limitation” request with the World Intellectual Property Organization (WIPO) to correct the specification. You must then request a suspension of the CNIPA review and submit proof of your WIPO application. The key evidence is the final, approved list from WIPO.
2. Abandon Part of the List: Clearly state in your review petition that you abandon the non-compliant goods/services. No additional evidence is required.
The goal is to align your protected list with China’s classification standards through correction or removal.
Q27: What evidence can prove no conflict with prior rights (Trademark Law Articles 30 & 31)?
A: A conflict under Articles 30 and 31 requires both trademark similarity and similarity of the related goods/services. Therefore, evidence showing a change in the legal or factual status that removes this basis for confusion can be submitted. The main scenarios and corresponding evidence are as follows.
1. The applied-for trademark enjoys priority. The applicant can submit a copy of the first filed trademark application from the country of origin, proving that its priority date is earlier than the filing date of the cited mark.
2. The goods/services are not similar. This can be proven by showing: 1) the applicant has abandoned the review for goods/services deemed similar; 2) according to the current version of the Nice Classification, the goods/services are not similar; 3) the applicant has deleted goods/services (for domestic applications) or successfully limited them through the Madrid System's subsequent designation procedures, making them dissimilar to those of the cited mark; or 4) the rights of the cited mark for similar goods/services have been partially invalidated, cancelled, revoked, or have lapsed.
3. The cited mark's rights have ceased entirely. Evidence includes official notices showing the cited mark was refused, invalidated, revoked, withdrawn, cancelled, expired, not renewed, or abandoned internationally.
4. The trademarks are owned by the same entity. Proof that both the applied-for trademark and the cited mark have been transferred to or are owned by the same applicant through assignment or change of name procedures is sufficient.
For scenarios involving changes in the status of goods/services or trademark rights (points 2.3, 2.4, 3, and 4 above), the applicant should promptly submit a written statement explaining the specific details of the change and its impact on the case.
Q28: Can evidence of actual use be submitted in a review case to prove that the applied-for trademark and the cited trademark are unlikely to cause confusion in the marketplace?
A: However, a key exception exists. Evidence may be considered if it proves, through historical documents, official mainstream media reports, or administrative files, that due to specific historical reasons, the applied-for trademark has formed a long-standing, unique, and stable association exclusively with the applicant and has established its own distinct consumer base.
In such exceptional cases, this evidence can demonstrate that despite similarities, the two marks have coexisted in reality without causing public confusion about commercial origin, thereby potentially overcoming the rejection.
Q29: What evidence is needed to request a suspension of the review proceeding?
A: To request a suspension, the applicant must submit a clear, written request within three months from the date of filing the review application. This request must specify key details, including the registration number(s) of the cited trademark(s) in question, the specific legal proceeding (e.g., invalidation, cancellation) they are involved in, and a concrete explanation of how the outcome of that proceeding directly impacts the present application.
Once the legal status of the cited trademark(s) is conclusively determined, the applicant must promptly submit a follow-up written request to resume the review. This request must be accompanied by official evidence, such as a final decision notice or registration cancellation certificate, that conclusively proves the new status of the cited mark(s) and resolves the previously cited obstacle.
This document is for reference only and does not constitute legal advice. Trademark matters are highly professional, and we strongly recommend that you seek advice from a professional consultant regarding specific cases. If you require further professional analysis or agency services, our team is ready to provide you with support.
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