China IP SME Helpdesk Newsletter

Many EU SMEs file a trade mark in China and receive a preliminary rejection from the China National Intellectual Property Administration (CNIPA) because of a prior similar or identical trade mark. The SMEs may then, with the help of a lawyer, try to file a non-use cancellation to invalidate the prior mark and appeal against the refusal. In many cases, however, the CNIPA may decide on the appeal before they hear the non-use cancellation case, leaving many SMEs frustrated. In this article China IP SME Helpdesk external expert Fabio Giacopello explains why this happens. To avoid uncertain proceedings, Mr. Giacopello recommends that SMEs always carry out a pre-filing trade mark search to discover any prior similar trade marks.

On 7 June the CNIPA started public consultations on the draft amendments to the “Measures for the Administration and Protection of Collective Marks and Certification Marks”. The draft amendments aim to solve many legal issues around the use of collective trade marks, such as the issue of the mark becoming a generic name. Producers of goods protected by EU geographical indications should closely follow these legal developments.

The State Administration for Market Regulation (SAMR) has recently released the Annual Report of China on Anti-Monopoly Law Enforcement (2021). The report indicates that “the SAMR has resolutely implemented the strategies, […to] improve the fair competition system, [and to ] promote in-depth implementation of fair competition policies.”

SMEs who are interested in China’s patent open license system are welcome to read the Trial Program on Patent Open License, a document that highlights the experiences of local provinces, patentees and companies wishing to take up such licenses. Cao Xinming, Director of IP Research Center, Zhongnan University of Economics and Law highlights the benefits of the patent open license system to SMEs: "The patent open license system accelerates patent commercialization, graduating rights to profits. SMEs have a broader technology supply channel, acquire new technologies at lower costs, which definitely could propel their quality development."