BEIJING – On August 30, 2013, China’s Standing Committee of the National People’s Congress (NPCSC) promulgated the “Decision on Amending the Trademark Law of the People’s Republic of China (Presidential Decree No. 8, hereinafter referred to as the ‘Decision’).” Although China holds the world’s largest number of registered trademarks, infringement and piracy remain widespread.
Revisions to the Trademark Law were made in a move to further strengthen the legal protection of trademarks and intellectual property. Efficiency, protection and punishment are three key words emphasized in the new law, which comes into effect on May 1, 2014.
Key points in the new Trademark Law are as follows:
Limited Examination Periods
In response to complaints of an overly-long procedure for trademark prosecution, the new Trademark Law specifies the time periods for completing a trademark registration, review and objection procedure.
- The trademark bureau should complete examination of trademark registration applications within nine months from the date of receipt of the relevant application documents.
- If an applicant wishes to appeal the denial of an application, he/she should apply to the trademark review and adjudication board for review within 15 days. The review should be concluded within nine months; a three-month extension is permissible under special circumstances.
- If an objection is raised against a trademark that has been preliminarily approved for publication, the trademark bureau should verify the claims of both parties and make a decision on whether to grant the trademark registration within 12 months; a six-month extension is permissible under special circumstances.
Inclusion of Audio Trademarks
The Decision stipulates that “any mark, including text, graphics, three-dimensional marks, color combinations and sound, etc., that is capable of differentiating the commodities of a natural person, legal person or any other organization from that of others, can be registered as a trademark. A combination of these elements may also be registered as a trademark.”
This is the first time that sounds have been permitted to be registered for trademark in China. Sounds can include mobile phone ring tones, and can be musical or non-musical (e.g., natural, human or animal sounds), or a combination of both.
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Moreover, applicants for trademark registration can apply for the registration of a trademark for commodities in multiple categories using a single application. Previously, only one category was permitted per application. Application documents may be submitted in hard or digital format.
Protection for Well-Known Trademarks
The Decision stipulates that “well-known trademarks” are not honorary titles and shall be banned from use in the packaging, advertising and exhibition of products. Enterprises that use a well-known trademark in their business signs will be fined RMB 100,000. Further, in the course of handling trademark disputes, a determination of well-known trademark shall be conducted, as needed, to prohibit their misuse.
Protection for Unregistered Trademarks
The owners of unregistered trademark are entitled to prohibit others from registering their trademarks or using similar ones, especially if the applicant is aware of the existence of the trademark through a contractual or business relationship, or any other type of relationship with the owner. For malicious infringement upon the rights to an exclusive trademark, compensation is set at an amount not exceeding RMB 3 million.
Improvement of the Objection System
Previously, objections were permitted to be filed in the name of an unrelated third party to maintain the confidentiality of the objector’s identity. Now, to prohibit third parties from improperly profiting from objections, the new Trademark Law stipulates that only interested parties and stakeholders may file an objection, and emphasizes the importance of supporting evidence for the objection. A penalty applies to objections filed in bad faith that cause the trademark registrant to suffer losses.
Honesty and Trustworthiness
The Decision stipulates that trademark agencies should adopt the principles of honesty and trustworthiness, and notify the entrusting party if registration is not permitted. These principles shall also be applied to the procedure for trademark prosecution.
China’s Trademark Law was first adopted in 1982 and has been amended twice, in 1993 and 2001.
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