As discussed in previous China Updates, China has been working on revising its eleven year old Trademark Law for many years. On 30 August 2013, the Standing Committee of the National People’s Congress passed the most recent publicly disclosed draft of the new trademark law. Key features of this new law are as follows:
- Multi-Class applications will be permitted for the first time
- Sound marks will become registrable
- The Chinese Trademark Office (“CTO”) examiners will issue office action reports (examination reports) where concerns arise as to the registrability of a mark, rather than simply issuing rejection reports requiring appeal. This should cut down on the workload for the appeal level of the CTO (i.e. the TRAB) as appeal numbers are expected to drop dramaticallyS
- trict time limits for examination of cases by the CTO examiners have been laid out, in the hope of dramatically reducing the time it takes for applications, oppositions and appeals to be dealt with
- An unsuccessful opponent to an application will not be able to appeal the decision to the TRAB, but will need to file an invalidation action to the TRAB. However, if an opponent is successful, the owner of the application is permitted to appeal to the TRAB as of right. This appears to be aimed at reducing the workload for the TRAB, although it is uncertain whether in practice, it will actually do so.
- Aiding and abetting infringing activities has become an act of infringement – this clears up inconsistent court decisions and should be a valuable tool in dealing with online and bricks & mortar shopping malls that are permitting clear and obvious sales of counterfeits
- Maximum statutory damages have been increased from RMB500,000 to RMB3,000,000 for trademark infringement, where no actual evidence of damage has been providedA
- # clearer path for opposing/invalidating applications that are clearly bad faith applications has been included
The new law is to commence operation on 1 May 2014. Just in time for discussion at the International Trademark Association General Meeting in Hong Kong.