Because the changes to China’s trademark laws are so important LEHMAN, LEE & XU felt it was vital that the experts in our Trademark Section compile the following information about the trademark law changes for our readers.
China’s legislature on August 30, 2013 passed a new trademark law to crack down on infringement and ensure a fair market for trademark holders. Prior to this amendment China’s Trademark Law had previously been amended twice, once in 1993, and again in 2001.
The following is a list of some changed and new provisions under the new trademark law, in no particular order.
1.
Sound
marks are permitted.
2.
Multi-class application
is permitted.
3.
Electronic application is available
. The new Trademark Law increases electronic applications based on their original paper filings.
4.
Invalidation
. Invalidation is a new legal procedure established by the new Trademark Law.
5.
Damages for trademark infringement
. The new law raises the compensation ceiling for trademark infringement to 3 million yuan (approximately 500,000 U.S. dollars),
six times the previous limit.
The court may order production records and other information from the infringers when assessing damages and punitive damages are now available.
6.
Well-known Trademarks
. The new law offers protection for well-known trademarks, giving owners the right to ban others from registering their trademarks or using similar ones even if such brand names are not registered. However, the words “
well-known trademark
” shall not be used in promotions or advertising.
7.
Examination Period
. The new law changes provisions regarding the examination period of applications for trademark registration to make it more efficient:
a). For a smooth and straightforward trademark application (no office action/rejection/opposition arises) before the China Trademark Office, new applications should be published within 9 months from the filing date of an application;
b). The review of an application after a rejection decision from the Trademark Review and Adjudication Board should be concluded within 9 months. Under some special circumstances, the examination period may be extended to 12 months;
c). Opposition cases should be concluded within 12 months. Under some special circumstances, the examination period may be extended to 18 months;
d). Review of an opposition case should be concluded within 12 months. In some special circumstances, the examination period may be extended to 18 months;
e). Non-use cancelation cases should be concluded within 9 months. Under some special circumstances, the examination period may be extended to 12 months;
f). Invalidation cases before the Trademark Review and Adjudication Board should be concluded within 9 months. Under some special circumstances, the examination period may be extended to 12 months.
8.
Trademark Renewal
. Trademarks can be renewed within
12 months
prior to the expiration date.
9.
Prior use
. Prior to the application date of the registered trademark, if the same/ similar trademark has been used by the third party on the same/similar goods/services and it has certain recognition and influence, the registrant of the trademark cannot forbid the third party’s use of the same/similar mark on its originally designated goods/services, but the registrant can ask the third party to add something to make that trademark distinguishable from the registrant’s trademark.
10.
Trade name
. The use of another’s trademark in one’s company name or trade name is not permitted and may create liability under China’s Unfair Competition Law.
11.
Principle of good faith
. The new law adopts the principle of good faith during the registration and use of trademarks. Infringement of the trademark rights of others could result in fines worth
five times
the sales volume resulting from illegal business.
12.
Trademark agencies
. The new law added the provision 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 on the trademark rights of others. Agencies violating the law will face fines and a bad credit record filed by industrial and commercial authorities. Those involved in serious cases will have their businesses suspended.
Should further changes or additions to China’s trademark laws come to pass I will be certain to pass them on to you.
Hawkeye in China
Lex Smith