China's legislature adopts amendment to Trademark law

The new amendment will become effective on May 1, 2014.

Major changes and additions in the amendment are summarised below.

Expansion of non-traditional trademarks

The new amendment accepts applications for the registration of a sound and the combination of a sound with other elements.

Multi-class application

According to the new amendment, the applicant can submit one application to register a mark in multiple classes. Today, China has a single class filing rule for national filings.

Applicant’s chance to explain

During examination, if the China Trademark Office (CTMO) thinks it necessary for the applicant to make explanation or amendment on the content of the application, it can ask the applicant to make such explanation or amendment. Under current practice, the CTMO directly issues a request for amendment of goods/services or refusal of application.

Shortened examination period

The new amendment stipulates that the CTMO shall complete examination within nine months of receipt of the application documents. Other procedures concerning appeal, opposition, or invalidation are all stipulated with definite terms.

Renewal

An application for renewal of the registration can be made within 12 months before the date of expiration.

Well-known marks

Recognition of well-known status of a trademark based on a party’s request requires affirming it as a matter of fact in a trademark case.

The new amendment adopts the principle of good faith during the registration and use of trademarks.

Producers and operators shall not use the term “well-known mark” on goods, packages of goods or containers of goods, or in advertising, promotions, exhibitions or other commercial activities.

Simplified opposition procedures

The CTMO will make a decision within 12 months as from the date of expiration of the publication. In special situations, an extension of six months can be approved.

If the CTMO dismisses an opposition, the opposer cannot appeal against the CTMO’s decision to the Trademark Review and Adjudication Board (TRAB), but it can apply to invalidate the mark after it is registered. However, if the CTMO allows an opposition, the applicant of the opposed mark can appeal against the CTMO’s decision to the TRAB. This change aims at reducing the number of bad faith opposition cases and alleviating the burden of the applicant.

Forbidding of the copying of an earlier mark of a party who has commercial ties with the applicant

The new amendment adds: “Where the application for the registration of a trademark used in the same or similar goods is identical or similar to another party’s unregistered trademark which was earlier used, and the applicant clearly knows another party’s trademark due to non-agent/ representative contract, business, or other relations between the applicant and another party, the applicant’s application for registration shall not be allowed if another party opposes it.”

Principle of good faith

The new amendment adopts the principle of good faith during the registration and use of trademarks.

Conflict of trademark and trade name

The new amendment makes it clear that the Anti-Unfair Competition Law will be applied if any party uses another party’s registered trademark or unregistered well-known trademark as its trade name or portion of the enterprise name, causing public confusion and constituting unfair competition.

Increased damages

There is a significant increase in statutory damages from RMB500,000 ($82,000) in the old law to RMB3 million ($500,000) in the new amendment.

Trademark agencies

The new amendment adds that trademark agencies are not allowed to accept entrustment if they know or should know that their clients are conducting a malicious registration or infringing others’ trademark rights.

Xiang Gao is a partner at Peksung Intellectual Property Ltd and head of its trademarks department. He can be contacted at: gxiang@peksung.com