The draft for the amendment of the Chinese Trademark Law was adopted at the 4th Session of the Standing Committee of the 12th National People’s Congress on August 30, 2013. The amended law will be implemented as of May 1, 2014.
The key amendments to the Chinese Trademark Law are summarized as below:
- Sound marks registrable
Currently, only visually perceptible signs, including words, devices, letters, numerals, three-dimensional signs, combination of colours as well as the combination of such signs are registrable. According to the amended law, subjects of trademark protection are extended to include sound marks.
- Multi-class applications acceptable
Currently, one application is for one mark in one class. According to the amended law, multi-class applications are acceptable.
- Office actions available
Currently, office actions are available only when designated goods or services are not in compliance with the classification requirement.
According to the amended law, upon examination, the examiner may issue an office action addressing formality or substantive issues. The applicant may present his argument or amend his application.
- Statutory time-limit for examination
The amended law provides statutory time limits for the Trademark Office and the TRAB to make decisions on procedures such as trademark registrations, reviews, oppositions, invalidations and cancelations.
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- Tackling bad-faith applications
Two clauses are added to provide more means to tackle bad-faith applications.
According to newly added Paragraph 2 of Article 15, a trademark shall not be registered on identical or similar goods/services if the mark has been used by others and the applicant knows the mark through contractual, transactional or other relationships with the prior user, if the prior user raises an opposition.
According to a clause added to Article 7, filing application for registration and use of a trademark shall comply with the principle of honesty and credibility.
- Re-construction of opposition procedure
Currently, any person may take opposition action against a published trademark application on any ground. And any party may appeal the opposition decision made by the Trademark Office to the TRAB and initiate legal proceedings in Courts.
According to the amended law, if the Trademark Office makes a decision on opposition in favor of the opponent, the trademark applicant may appeal the decision to the TRAB and may initiate legal proceedings in Courts. However, if a decision is made against the opponent, the opponent could not appeal the decision. The opponent may take invalidation action with the TRAB after the concerned mark is registered.
Currently, a trademark registration can be renewed within 6 months before the expiration. According to the amended law, a trademark registration can be renewed within 12 months before the expiration.
- Non-publicity of well-known marks
The term “well-known mark” should not be used on goods, packages or containers of goods, or in advertising, exhibition or any other business activities. Violation of the stipulation is subject to injunction and monetary penalty.
- Right of prior use
The concept of right of prior use is introduced: A person may continue to use his mark even after an identical or similar mark has been registered in identical or similar goods/services if he uses the mark before the application for registration of the mark is filed and that a reputation is obtained by prior use. However, the use is limited to the original scope, and the trademark registrant may ask the prior user to attach additional sign to differ goods/services provided by the two.
In case a registered mark has become a generic name of the designated goods or services, the mark is vulnerable to cancellation.
A person who intentionally provides assistance to infringer to implement infringement should be liable for infringement.
- Repeat infringer
Infringer who implements infringement repeatedly within 5 years should receive a heavier punishment.
- Misuse of trademark
If a registered mark, or an unregistered but well-known mark, is used as a trade name and such use misleads the public, the Anti-unfair Competition Law can be applied.
- Increased damages
Currently, damages for trademark infringement are assessed based on the losses suffered by the trademark owner, the profits gained by the infringer arising from infringement, or with reference to the royalty of a license. If the three methods do not work, statutory damages up to 0.5 million yuan (approximately USD82, 000) can be awarded.
According to the amended law, punitive damages up to three times the damages assessed in accordance with the methods mentioned above are possible in case the infringement is intentional and causes serious consequence. The statutory damages are increased to 3 million yuan.
When damages are claimed, evidence proving use in the past 3 years should be submitted if a defense of non use is presented. No damages should be awarded if the trademark registrant fails to submit such evidence, nor to prove any other losses.