On April 29, 2014, new Regulations for the Implementation of the Trademark Law of the People’s Republic of China (the new regulations) was published. It came into effect on May 1, 2014, time-consistent with the third amendment of the Trademark Law of the People’s Republic of China (the new amendment).
By refining some of the articles of the new amendment and modifying some of the content of former regulations, the new regulations make the new amendment more practical and enforceable. Here are some of the new regulations’ key points:
- Added periods not included into the timeframes
The new amendment sets up timeframes for examination, appeal and invalidation procedures. The new regulations state that the following periods shall not be included into the timeframes:
- duration of China Trademark Office’s (CTMO) or China Trademark Review and Adjudication Board’s (TRAB) delivery of documents via publication;
- duration needed for a party’ supplementing evidence or documents and duration needed for a new party’s re-reply because of replacement;
- duration needed for two parties’ submission of evidence of use, consultation, or draw by lot in respect of their applications filed on the same day.;
- duration of a party’s waiting for determination of priority right; or
- duration of the CTMO’s or the TRAB’s waiting for results of prior right cases on the basis of an applicant’s request in the course of the CTMO’s or the TRAB’s examination.
- Added formality requirements for an application to register a sound mark
An applicant must provide a musical sample; explain how the sound mark is used; and describe the sound mark by using a staff or numbered musical notation with literal explanation, or by using literal representations if it cannot be described by using a staff or numbered musical notation.
- Revised formality requirements for an application to register a 3-D mark
An applicant must also explain how the 3-D mark is used; and submit a specimen by which the 3-D shape can be determined – the submitted specimen must contain at least three view drawings of the 3-D mark.
- Revised formality requirements for an application to register a color combination mark
An applicant must also explain how the color combination mark is used.
- Added requirement for providing of certificate of identification of the applicant company
To apply for trademark registration, an applicant company must provide a copy of its certificate of identification. This requirement also applies to applications for change, transfer, renewal, opposition, cancellation and other trademark matters.
- Specified time limit for the applicant’s explanation or amendment
If the CTMO believes that the content of a trademark application needs to be explained or amended, it can notify the applicant, and the applicant can make such an explanation or amendment within 15 days of the receipt of the notification.
- Specified time limit for filing divisional application
Multi-class filing is allowable after May 1, 2014. After that, division of application is also possible. Division can be requested within 15 days of the receipt of the CTMO’s notice of rejection in respect of partial goods or services. After the split, the application with unblocked goods or services will generate a new application to be published initially with a new filing number but reserving the original filing date.
- Some issues about opposition procedures before the CTMO
The opposer or the opposed party can still supplement their evidence within three months of the date of filing the opposition or response to the opposition. However, if the evidence is generated after the expiry of the three-month period or evidence is not submitted before the expiry of the three-month period with one party’s proper excuse, such evidence, if submitted after the expiry of the three-month period, can be accepted by the CTMO upon cross-examination by the other party.
- Some issues about review or invalidation procedures before the TRAB
The period for supplementing evidence is also three months and the TRAB accepts evidence after the deadline in the same condition as above. Additionally, the TRAB, based on the parties’ requests or actual needs, may decide oral hearing on a case and shall notify the parties 15 days before the date of the oral hearing.
If the CTMO rejects an opposition, the opposer cannot appeal against the CTMO’s decision to the TRAB, but it can apply to the TRAB to invalidate the mark after it is registered. The invalidation can be based on the same facts and grounds as the former opposition, which is an exception to the general rule.
- Revised procedures for assignment of a trademark
An assignment must be handled by both the assignor and the assignee. In old practice, an assignment is handled by the assignee.
- Revised time requirements for recordal of license
Where licensing another person to use its registered trademark, the licensor shall, within valid period of the license contract, apply to the CTMO for the record. The former regulations require handling within three months from the date of conclusion of the license contact.
- Defined “facilitating infringement”
Providing others with storage, transportation, mail, print, concealing, marketing place or platform of trading goods on the internet is considered as facilitating infringement mentioned in the sixth paragraph of Article 57 of the new amendment.
- An act defined as infringement
One party’s use of signs identical with or similar to another party’s registered trademark in respect of identical or similar goods as name of the goods or decoration of the goods, misleading the public, is an act of infringement mentioned in the second paragraph of Article 57 of the new amendment.
- Added calculating method for the volume of illegal operation
To calculate the volume of illegal operation mentioned in Article 60 of the new amendment, the following can be considered:
- the sale price of infringing goods;
- the marked price of infringing goods not sold;
- the average price of actual sales of confirmed infringing goods;
- the mid-market price of the infringing goods;
- revenue generated by the infringer’s infringement;
- other factors for reasonable calculation
An added chapter “International Registration” in the new regulations provides guide to applicants in China. Besides further explained duties and obligations of Chinese agencies, penalties are added in the new regulations.