After being in the pipeline for almost 10 years, amendments to trade mark law in China were finalised on 31 August 2013 and are scheduled to take effect on 1 May 2014. We mention the most significant amendments as follows:
- It will be possible to file a trade mark application to include multiple classes. Presently, only single class applications are allowed. This brings Chinese trade mark law into line with trade mark laws in most other countries.
- Registration of non-traditional trade marks such as sounds and single colours will be possible. There is no guidance presently of whether evidence of use will need to be provided before such trade marks can be registered in China.
- Examination of a trade mark application must be completed within 9 months from the filing date. If the application is refused, an appeal can be filed against the refusal which must also be completed within 9 months.
- There will no longer be a right to appeal against an unsuccessful opposition decision and the opposed mark will proceed directly to registration. The Opponent will have the right to file an invalidation action against the registered trade mark.
- Probably the most significant amendment is the introduction of provisions which prevent trade mark agents in China from acting in bad faith – if an agent knew or should have known that the application was in bad faith, it may be liable for infringement. It remains to be seen how this amendment will be implemented in practice.
- Statutory fines for trade mark infringement have been significantly increased.
It is important to remember that in China, trade mark ownership rights are claimed by the person or entity that is first to file a trade mark application in China. Rights based on first use are not recognised. It is therefore important to ensure that a trade mark application is filed in China before any discussions or negotiations with local entities are entered into.