IP Newsletter Issue 15 (2013-10-28)
 
China passes new Trademark Law

On August 30, 2013,the new trademark law has been adopted and will take effect on May 1, 2014
 
The primary points of the amendment compared to the old trademark law are stated as follows:
 
1. Addition of trademark type:
Sound can be registered as trademark
 
2. One trademark application with multiple classes:
In accordance with the amended Trademark Law, if any applicant intends to apply a trademark for goods with multiple classes, the applicant may file one trademark application covering goods in different classes.
 
3. Postpone for a renewal application:
The existing Trademark Law provides that a renewal application for a registered trademark can be filed from 6 months before the expired date, while the new trademark law provides that the application can be filed from 12 months before the expired date.
 
4. Improvement of Opposition procedure:
If dissatisfied with the decision on the opposition, the opposed party may apply for a review to the Trademark Review and Adjudication Board (TRAB). However, the opponent may turn TRAB to declare the registered trademark invalid after the Trademark Office approved the registration of the opposed trade mark, but not apply for a review to the TRAB.
 
5. Introduction of invalidation procedure of a registered trademark:
An invalidation procedure of the registered trademark provides that if a registered trademark violates the provisions of Article 10, 11 or 12 of the new law, or the registration of a trademark has been obtained by fraud or any other unfair means, the Trademark Office shall declare the registered trademark invalid.  And any other party or individual may request TRAB to declare the registered trademark invalid.
 
If a registered trademark violates the provisions of Article 13 (2) and (3), 15, 16(1), 30, 31, 32 of this law, the holder of prior right and the interested party may request TRAB to declare the registered trademark invalid.
 
6. Well-known trademark Protection:
A well-known trademark, according to the parties’ request, can be recognized when the facts in each case support such a conclusion.  According to the amended Trademark Law, a producer or operator shall not use the words “Well-known Trademark” on its goods, packaging, or containers, or in its advertising, exhibitions or other commercial activities.
 
7. Strengthening protection of trademark right:
a) Article 57 of the amended Trademark Law provides that the act to deliberately provide convenient conditions for infringing the exclusive rights to use the trademark of the other person or to help others carry out the infringement of the exclusive right of the trademark belongs to the act of the infringement on the exclusive right to use a registered trademark.
b) Use of a registered trademark or an unregistered Well-known trademark of the other person is prohibited as a shop name in an enterprise name.
c) New trademark law defines the concept of fair use of the trademark:
·Generic names, device, and model of its designated goods or directly indicates the goods characteristics of quality, raw material, function, purpose, weight, quantity, etc. Indicated in a registered trademark, or place names contained in a registered trademark, the registrant has no right to prohibit others’ fair use of those mentioned above.
·If others have used the same or similar trademark with the same or similar designated goods and the trademark possesses certain influence, the registrant of the trademark have no right to prohibit the use of the trademark in the original usable range, but could request the users to add distinguishable sign.
 
8. Adding punitive compensation provisions and raising the compensation standards for trademark right protection:
Facing the high expenses in safeguarding the rights and interests, the new trademark law brings in the punitive compensation provisions. In accordance with Article 63 of the new Trademark Law, where an offender who maliciously infringes a trademark right, resulting in severe consequences, the amount of infringement fines may be determined within one to three times of the losses caused to the right holder thereby, the benefits obtained by the offender therefrom or the loyalties of the registered trademark. Furthermore, if none of the amount of aforesaid three expenses may be determined after investigation, the upper limit of statutory compensation to be decided by the court is raised to CNY 3,000,000.
 
9. Clarification of the time limit of examination for The Trademark Office and the Trademark Review and Adjudication Board: 
a) Application of Registration:
In accordance with the Article 28 of the new Trademark Law, the examination of a new trademark application shall be accomplished within nine (9) months of receipt of the application documents.  In conformity with the relevant provisions of the Law, this trademark application shall be preliminarily approved and published. 
 
b) Declaration of invalidation of A Registered Trademark:
Where other nature or legal person applied an invalidation of a registered trademark based on the prohibitive provisions of the Law, the Trademark Review and Adjudication Board shall rule within nine (9) months since the filing date of the declaration of avoidance.  Where an extension is necessary for special circumstances, the time limit can be extended for three (3) months upon approval of the administrative department for industry and commerce under the State Council. 
Where the holder of the prior rights or the interested party applied an invalidation of a registered trademark based on the prior rights or other legal benefits, the Trademark Review and Adjudication Board shall rule within twelve (12) months since the filing date of the declaration of avoidance.  Where an extension is necessary for special circumstances, the time limit can be extended for six (6) months upon approval of the administrative department for industry and commerce under the State Council. 
·The review of an invalidation issued by the Trademark Office:
Where the Trademark Office issued a declaration of invalidation based on the prohibitive provisions of the Law, if not satisfied with this decision, the parties involved may apply a review of the declaration of avoidance.  The Trademark Review and Adjudication Board shall rule within nine (9) months since the filing date of the application of review.  Where an extension is necessary for special circumstances, the time limit can be extended for three (3) months upon approval of the administrative department for industry and commerce under the State Council. 
 
c) Review of Refusal:
In accordance with the Article 34 of the new Trademark Law, the Trademark Review and Adjudication Board shall rule within nine (9) months since the filing date of the application of review. 
 
d) Opposition Application:
In accordance with the Article 35 of the new Trademark Law, where an opposition is filed against a trademark that has been preliminarily approved, the Trademark Office shall rule within twelve (12) months since the expiration date of the publication of the trademark.  Where an extension is necessary for special circumstances, the time limit can be extended for six (6) months upon approval of the administrative department for industry and commerce under the State Council. 
 
e) The Opposition Review:
The Trademark Review and Adjudication Board shall rule within twelve (12) months since the filing date of the application of opposition review. 
 
f) Cancellation Application Based on Non-use for consecutive three years:
In accordance with the Article 49 of the new Trademark Law, the Trademark Office shall rule within nine (9) months since the filing date of the application of the non-use cancellation. 
 
g) Review of Non-use Cancellation:
In accordance with the Article 54 of the new Trademark Law, the Trademark Review and Adjudication Board shall rule within nine (9) months since the filing date of the application of review.