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Key Amendments To The Chinese Trademark Law

Zhou Zhongqi

CCPIT Patent & Trademark Law Office, Vice President, Beijing, China

The draft for the amendment of the Chinese Trademark Law was adopted at the 4th Session of the Standing Committee of the 12th National People's Congress on August 30, 2013. The amended law will be implemented as of May 1, 2014.

The key amendments to the Chinese Trademark Law are summarized below:

1. Sound Mark Registrable

Current: Any visually perceptible sign, including words, devices, letters, numerals, three-dimensional signs, combination of colours as well as the combination of such signs are registrable.
Amended: Subjects of trademark protection are extended to include sound.

2. Multi-Class Applications

Current: One application is for one mark in one class.
Amended: Multi-class applications are acceptable.

3. Office Actions

Current: Office actions are available only when designated goods or services are not in compliance with the classification requirement.
Amended: Upon examination, the examiner may issue an office action addressing formality or substantive issues. The applicant may present his argument or amend his application.

4. Statutory Time-Limit For Examination

The amended law provides statutory time limits for the Trademark Office and the TRAB to make decisions on procedures such as trademark registrations, reviews, oppositions, invalidations, and cancellations.

5. Tackling Bad-Faith Applications

Two clauses are added to provide more means to tackle bad-faith applications. According to newly added Paragraph 2 of Article 15, a trademark shall not be registered on identical or similar goods/services if the mark has been used by others and the applicant knows the mark through contractual, transactional or other relationships with the prior user, if the prior user raises an opposition.
A new clause is added to Article 7: Filing application for registration and use of a trademark shall comply with the principle of honesty and credibility.

6. Re-Construction of Opposition Procedure

Current: Any person may take opposition action against a published trademark application on any ground. And any party may appeal the opposition decision made by the Trademark Office to the TRAB and initiate legal proceedings in Courts of law.
Amended: Owner of prior right or interested party may take opposition action against a published trademark application on relative ground and any person may take opposition action on absolute ground.

If the Trademark Office makes a decision on opposition in favor of the opponent, the trademark applicant may appeal the decision to the TRAB and may initiate legal proceedings in courts. However, if a decision is made against the opponent, the opponent could not appeal the decision. The opponent may take invalidation action with the TRAB after the concerned mark is registered.

7. Well-Known Mark

1. Recognition and protection of well-known mark should follow the principles of passive protection, necessity check and case-by-case recognition: only when a dispute over registration or use of a mark occurs, does the mark owner request the Trademark Office, the TRAB or Courts of law to recognize his mark as a well-known mark. The recognized mark is not necessarily protected as a well-known mark in other disputes wherein the same mark is involved.
2. The term "well-known mark" should not be used on goods, packages or containers of goods, or in advertising, exhibition or any other business activities.
3. Violation of the stipulation of the non-publicity clause is subject to injunction and monetary penalty.

8. Right of Prior Use

The concept of right of prior use is introduced: A person may continue to use his mark even after an identical or similar mark has been registered in identical or similar goods/services if he uses the mark before the application for registration of the mark is filed and that a reputation is obtained by prior use. However, the use is limited to the original scope, and the trademark registrant may ask the prior user to attach additional sign to differ goods/services provided by the two.

9. Dilution

In case a registered mark has become a generic name of the designated goods or services, the mark is vulnerable to cancellation.

10. Renewal

Current: An application for renewal of a registration shall be made within 6 months before the expiration.
Amended: An application for renewal of a registration shall be made within 12 months before the expiration.

11. Co-infringer

A person who intentionally provides assistance to infringer to implement infringement should be liable for infringement.

12. Repeat Infringer

Infringer who implements infringement repeatedly within 5 years should receive a heavier punishment.

13. Misuse of Trademark

If a registered mark, or an unregistered but wellknown mark, is used as a trade name and such use misleads the public, the Anti-unfair Competition Law can be applied.

14. Increased Damages

Current: Damages for trademark infringement are assessed based on the losses suffered by the trademark owner or the profits gained by the infringer arising from infringement. If neither the losses nor the profits can be assessed, damages can be assessed with reference to the royalty of a license, if there is a license that can be referred to. If the three methods do not work, statutory damages up to RMB 0.5 million (approximately USD 82,000) can be awarded.
Amended: Punitive damages up to three times the damages assessed in accordance with the methods mentioned above are possible in case the infringement is intentional and causes serious consequence.

The statutory damages are increased from RMB 0.5 million to 3 million.

When damages are claimed, evidence proving use in the past 3 years should be submitted if a defense of non use is presented. No damages should be awarded if the trademark registrant fails to submit such evidence, nor to prove any other losses.