Chinese Trademark Office Issues FAQ on Collective and Certification Trademark Registration

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On April 23, 2020, the Trademark Office of the China National Intellectual Property Administration issued a Frequently Asked Question list (FAQ) on registering collective/certification marks.  A Collective mark is a trademark owned by an organization (such as an association), used by its members to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization.  A certification mark is a type of trademark that is used to show consumers that particular goods and/or services, or their providers, have met certain standards.  The Trademark Office provided 15 questions and answers, which are translated into English below, edited for length and clarity.  The original (Chinese only) is available here.

Question 1. We are a company engaged in the promotion of agricultural products. Can we apply for the registration of collective trademarks?

  Answer: No.

  According to the provisions of Article 3, paragraph 2 of the Trademark Law, a collective mark refers to a mark registered in the name of a group, association or other organization for members of the organization to use in commercial activities to indicate the user ’s membership in the organization. The applicant of an application for  a collective trademark shall be a collective organization such as a group or an association. For example, China Xinhua Bookstore Association; Foshan Yueyang Chamber of Commerce in Hunan Province; Panggezhuang Watermelon Production and Marketing Federation in Daxing District, Beijing.

Question 2: Our association is preparing to apply for registration of a collective mark. We have downloaded the model of usage management rules on the official website of the Trademark Office. Article 5 requires the quality standards of commodities using the collective mark to be stated.

  Answer: According to the provisions of Article 10 (2) of the “Measures for the Registration and Administration of Collective Trademarks and Certification Marks” the rules governing the use of collective marks shall include the quality of the commodities designated by the collective mark. The quality standard of the goods (or services) designated by the collective mark may be the currently valid national standard (or industry standard / local standard), or it may be described by the applicant.

The standards provided by the applicant should clearly state the quality requirements of the commodities designated by the collective trademark, and cannot provide standards that are not related to the quality of the commodities designated by the collective trademark. 

  If the applicant itself describes the quality standard of the goods designated by the collective mark, the standard shall be clear and specific, without ambiguity.

Question 3: We are the China XX Association and are preparing to apply for the registration of a certification mark. According to the “Measures for the Registration and Administration of Collective Trademark Certification Marks”, we need to submit the use management rules that specify the specific quality of the goods (or services) using the certification mark , How should this be expressed as a comparison with a standard?

  Answer: According to Article 3, paragraph 3 of the Trademark Law, certification marks refer to the control of an organization that has the ability to supervise a certain product or service, and units or individuals outside the organization use it for its goods or services. 

  Compliance with a national mandatory standard will not meet the usage requirements. The quality of the goods (or services) using certification marks should be higher than the national mandatory standards. The applicant shall describe in detail the raw materials, manufacturing methods, quality or other specific standards of specific qualities, so that the trademark user and consumer know through the management rules that the goods (or services) using the certification mark are different from similar goods (or services) by exceeding the mandatory standard. Specificity is key.

  For example, the “CWIA + Graphic” trademark applied by the China Pen Association, the quality standard on the designated product “Pencil” is “Pencil (the pencil used for examination and card application must meet and exceed the GB / T26698-2011 standard) 1. The pencil “2B” is clearly visible; the cross section is flat and the lead is centered; the rod diameter is uniform and the length is uniform; the lacquer surface is bright and the color is uniform; the lead core is not easy to break during rolling, and the performance of the lead core meets or exceeds the pencil standard, that is, the core tip is affected Force / N ≥ 9.31; slip (friction coefficient) ≤ 0.175; 2. The snap-on pen shall be in accordance with the requirements of the snap-on movable pencil with a nominal lead diameter of 1.0 mm in Chapter 4 of QB / T1023-2007.”

Question 4. The Trademark Office provides example model rules for collective trademark use management. Articles 7, 8, 14, and 15 of the rules refer to a trademark licensee.  How should “other rights” and “other obligations” be listed?

  Answer: The official website of the Trademark Office provides a reference sample of the management rules for the use of collective / certification trademarks. The words “other rights” and “other obligations” are to remind applicants of collective / certification trademarks that licensing user may beget more rights and obligations. If so, the specific content of rights and obligations should be clarified; if not, the words “other rights” and “other obligations” should be deleted.

Question 5. Our association wants to apply for a collective trademark. What should be included in the list of collective members?

  Answer: The collective trademark ownership belongs to all members of the collective organization. According to relevant regulations, the registrant of a collective mark is a collective organization, and the user is its member, and the collective mark shall not permit the use of non-collective members. The list of collective members shall detail the names and addresses of all members of the collective organization.

Question 6. Do applicants for certification trademarks have to have testing capabilities?

  Answer: Article 10 of the “Measures for the Registration and Administration of Collective Trademarks and Certification Marks” stipulates that the rules governing the use of certification marks shall include the registrant’s inspection and supervision system for the use of certification mark goods. Certification trademark registrants must supervise and inspect the quality of commodities (or services) in accordance with the regulations on use management; collective members must allow registrants to conduct unscheduled inspections on the quality of commodities (or services). 

  According to Articles 5 and 11 of the “Measures for the Registration and Administration of Collective Trademarks and Certification Marks”, applicants applying for registration of certification marks shall attach the qualification certificate of the subject and shall specify in detail the specialties they possess or the professions they entrust Technical personnel, professional testing equipment, etc., to show that they have the ability to monitor the quality of specific commodities certified by the certification mark. The management rules for the use of certification marks shall include the inspection and supervision system for the registrants to use the certification marks.

  If the applicant of a certification mark has its own testing capabilities, providing its own testing qualification certificate, a list of testing personnel and a list of testing equipment should be provided to confirm that it has the ability to supervise the quality of specific commodities certified by the certification mark.

  If the applicant for a certification mark entrusts others to test, it is necessary to provide an entrusted testing agreement, a test certificate for the trustee, a list of testing personnel, and a list of testing equipment to confirm that the applicant has the ability to supervise the quality of the specific product certified by the certification mark.

Question 7. Our association wants to apply for the “Huaguoshan” collective trademark, but we found that others have already registered the “Huaguoshan” trademark on similar products. Can our trademark be approved for registration?

  Answer: Registration cannot be approved.

  Trademarks and collective trademarks that constitute the same or similar products cannot coexist on the same or similar goods.

Question 8. I searched the Trademark database and found that someone applied for a collective mark of “Safety Toys” on the 28th category of goods and was rejected. Why is it rejected?

  Answer: The purpose of setting up a collective mark is to prove to the public the origin, raw materials, manufacturing methods, quality or other specific qualities of a certain product or service by introducing a third-party evaluation system in the market. As a type of trademark, collective marks should also comply with relevant regulations including Article 11 of the Trademark Law. Therefore, collective marks should also have distinctive features.

  ”Safety toys” refer to toys that do not present any danger or hazard. According to the “Product Quality Law“, products that may endanger human health and personal and property safety must meet national standards for protecting human health and  property safety. Compliance with national standards is a basic quality requirement that relevant production operators must meet. The use of “safety toys” as a certification mark only indicates that the quality of “toy” products conforms to relevant national standards and lacks distinctive features. According to the provisions of Article 3 of the Trademark Law, Article 11 (1) (2), Article 30, and the Measures for the Registration and Administration of Collective Trademarks and Certification Marks, they shall be rejected.  See question 3.

Question 9. Our association has previously registered the trademark of “Samsungdong Fresh Peach” on 31 types of fresh fruits, but now it is feasible to register it as a collective trademark on the same commodity?

  Answer: Not feasible.

  If you have registered an ordinary trademark and want to register this mark as a collective trademark, you must cancel the previously registered ordinary trademark first.

Question 10. We are the holders of the collective trademark of the “Liaoshahe Lobster” geographical indication. Now we are expanding the industrial chain and want to register it as a collective trademark in the catering category.

  Answer: No. Registering the geographical indication of “Liaoshahe Lobster” as a collective trademark on goods or services other than “live lobster” may damage the legitimate rights and interests of some subjects who are engaged in related production and operation activities at their place of geographical indication but cannot become members of the registrant.

Question 11: Our county is a large agricultural county and is building a regional brand of agricultural products containing our county name. Can I apply for the registration of a collective trademark?

  Answer: Yes, but certain conditions must be met.

  In recent years, more and more local governments have paid more attention to the leading role of trademark intellectual property rights in regional economic development, and have taken regional brands as a starting point to carry out industrial integration and upgrade and promote local economic development. If the regional brand of agricultural products is composed of the names of administrative divisions above the county level and other distinctive text elements, the distinctiveness of the trademark can be achieved after long-term and large-scale use, and it has a certain visibility, and it must also be authorized by the local people ’s government. 

Question 12. I am a foreign applicant and want to apply for the registration of a collective / certification trademark in China. Do I need to authenticate materials such as applicant’s test ability certificate?

  Answer: Yes. When a foreign applicant submits a collective / certification trademark application at the Trademark Office, it should submit relevant materials that are authenticated (e.g., notarized (a sealed certificate that confirms the authority of a public official, usually a notary public), reviewed by state or county officials, then certified by State Department officials).

  Question 13. Can the registrant of the collective / certification mark use the collective / certification mark?

  Answer: The collective trademark registrant may use the collective trademark, but the certification trademark registrant shall not use the certification trademark.

  Article 17 of the “Measures for the Registration and Administration of Collective Trademarks and Certification Marks” stipulates that the collective members of a collective trademark registrant may use the collective trademark after performing the procedures prescribed in the rules governing the use of the collective trademark. Collective trademarks are not allowed to be used by non-collective members. Collective trademark registrants register on behalf of collective organizations. Therefore, the collective trademark registrant can use the collective trademark.

  Article 20 of the “Measures for the Registration and Administration of Collective Trademarks and Certification Marks” stipulates that the registrant of a certification mark shall not use the certification mark on the goods (or services) it provides. The registrant of the certification mark shall intermediate and supervise the quality of the goods (or services) using the certification mark to ensure that its goods (or services) meet the quality standards. Therefore, the certification mark can only be used by units or individuals other than the registrant, and the certification mark registrant shall not use the certification mark on the goods provided by itself.

  Question 14. Our association previously registered a collective / certification trademark, and now the standards of the products produced have changed, what should I do?

  Answer:    To apply for changes to the collective trademark / certification mark use management rules due to product standard changes, the following documents need to be submitted: (1) trademark change application; (2) subject qualification certification documents; (3) changed collective / certification mark use management rules .

      For details of the handling methods and precautions, please refer to the section “Application for Change of the Name of the Applicant of the Trademark Applicant’s Registered Name, Change of the Collective Trademark Certificate, Trademark Management Rules, Collective Membership List, Change of Trademark Agent Document Recipient.”

  Question 15. Can collective / certificate trademarks be transferred?

  Answer: Yes, all can be transferred.

  Collective trademarks and certification trademarks are both types of trademarks, and their transfer should meet the general provisions for trademark transfer.

  To apply for the transfer of collective / certificate trademarks, the following documents need to be submitted: (1) application for trademark transfer; (2) certificate of subject qualification of the assignee; (3) contract for trademark transfer; (4) collective / certificate trademark after transfer use management rules. For the transfer of collective trademarks, a list of the collective members of the transferee must also be submitted. To certify the transfer of a trademark, it is also necessary to submit proof of the transferee ’s supervision and testing capabilities.

Please refer to the “Application for Transfer of Registered Trademark Registration” section in the “Trademark Application Guide” section of the official website of the Trademark Office for details of the handling methods and precautions.

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

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Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.