Trademark registrations and new draft regulations
The statistics also showed that in 2013 the number of trademark oppositions in China amounted to 34,667, 4.58 percent less than in 2012.
Trademark law draft regulations published
Draft regulations amending Chinese trademark law have now been published.
On August 30, 2013, the Standing Committee of the National People’s Congress, China’s top legislative body concluded its session to adopt the third amendment to Chinese Trademark Law (‘the new amendment’), which will come into effect on May 1, 2014. The implementing regulations will be changed accordingly.
Meanwhile, on January 10, 2014, the Legislative Affairs Office of the State Council of China posted Implementing Regulations of Trademark Law of the People’s Republic of China (Draft for Comments) online, asking for public reaction to be submitted by February 10, 2014.
By refining some of the articles of the new amendment and modifying some of the content of the current regulations, the draft regulations make the new amendment more practical and enforceable. Here are some of the draft regulations’ key points:
Formality requirements for applications to register a sound mark:
The applicant must make it clear on the application form that the mark is a sound mark and describe how the mark will be used. The mark will have to be described using a staff or numbered musical notation with additional text.
Requirement of certificate of identification for the applicant:
To apply for trademark registration, the applicant must provide a copy of its certificate of identification. This requirement applies to applications for change, transfer, renewal, opposition, cancellation and other trademark matters.
Divisional application:
Division can be requested within 15 days of the receipt of the China Trademark Office’s (CTMO) 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.
Applicant’s chance to explain:
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.
Opposition:
Currently, the opposer or the opposed party can supplement their evidence within three months of the date of filing the opposition or response to the opposition. In the draft regulations, this limit is reduced to 30 days. However, upon cross-examination, the CTMO can accept new evidence which has significant influence on the outcome of the case after the expiry of the 30-day period.
Procedures for assignment of a trademark:
Currently, an assignment is handled by the assignee, so false assignment sometimes occurs. The draft regulations stipulate that the assignment must be handled by both the assignor and the assignee, or by a third party entrusted by them jointly.
Transfer of trademark by heritage:
The applicant must additionally submit relevant legal documents.
Calculating method for the volume of illegal operation:
The volume of illegal operation refers to the value an infringer gained in the process of manufacture, storage, transportation and sales of the infringing goods. The value of the infringing goods sold is calculated according to the price of the actual sales. The value of the infringing goods manufactured, stored, transported or unsold is calculated according to the actual average selling price of the infringing goods.
For those goods whose actual selling price cannot be ascertained, if a price tag is available the value is calculated according to the price tag; if a price tag is not available, the value is calculated according to the
mid-market price of the infringing goods.
Facilitating infringement:
Providing others with storage, transportation, mail, print, concealing, marketing place or Internet services for infringing goods is considered as facilitating the infringement.
