Latest amendments to PRC's trademark law
Major changes contained in the draft can be summarised below.
Simplified opposition procedures
Anyone opposing a trademark must be the owner of a prior right or be a party of interest. Opposition will be examined on relative grounds.
According to the draft, if the China Trademark Office (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, only 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.
Expansion of non-traditional trademarks
The draft proposes to accept applications for sound and single colour trademarks that has acquired distinctiveness through use.
Multi-class application
The draft proposes that an applicant can submit one application to register a mark in multiple classes.
Letter of examiner’s opinion
According to the draft, the examiner may issue an office action to the applicant requesting that the applicant explains or amends its application within 30 days after it is received, giving the applicant an opportunity to present its opinions before the examiner issues request for amendment of goods/services or refusal.
Extension of the time limit to appeal against a refusal of an application or cancellation of a registration
Under current practice, an appeal against the CTMO’s decision to refuse or cancel a mark must be filed to the TRAB within 15 days after receipt of the decision. The draft proposes extending this time period to 30 days.
Well-known marks
The draft makes it clear that the rule of individual recognition and passive protection is applied. Namely, recognition of well-known status of a mark is a matter of fact and is only effective in the specific case in dispute. The recognition shall be based on a party’s request.
Forbidding the copying of an earlier mark of a party who has commercial ties with the applicant
Article 15 of the draft adds: “Where the application for the registration of a trademark used in the same or similar goods is identical with or similar to another party’s prior trademark which was earlier used, and the applicant is familiar with another party’s trademark due to a contract, business, or other relations between the applicant and another party, the application for registration shall be refused.”
Punitive damages and increased statutory punishment
The draft introduces punitive damages for the first time, and the amount can be determined by the court within one to three times the profits earned by the infringer, the loss suffered by the right owner, or the licence fee, as reference. Furthermore, the draft proposes increasing the cap of statutory compensation from RMB500,000 ($80,000) to RMB1 million ($160,000).
Alleviation of the burden of proof for the rights owner
According to the draft, where the rights owner has tried to adduce evidence and the infringement-related account book or other records are held by the infringer, the court, in order to determine the amount of compensation, can order the infringer to provide the infringement-related account book or records. If the infringer does not provide them or provides false information, the court can refer to the right owner’s petition and evidence to determine the amount of compensation.
Non-use demurrer
According to the draft, where an owner of a registered trademark asks for compensation and the accused infringer argues non-use of the registered trademark, the court may ask the owner to provide evidence of actual use of the registered trademark during the preceding three years. If the owner cannot prove use in the past three years or cannot prove any other loss suffered, the accused party does not bear responsibility for compensation.
Note: The 2013 China International Trademark Festival will be held in Dalian, Liaoning Province, China from June 13 to 16, 2013.
