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January 15, 2012 Vol. 67 No. 2 Back to Bulletin Main Page

CHINA: Updates on Draft Amendments to Trademark Law


The Trademark Law of the People’s Republic of China was enacted in 1982 and has since been amended twice (in 1993 and 2001). Work on the most recent amendment started in 2003. Eight years later, in September 2011, the third draft of the amendment was submitted to and then released by the State Council to seek public opinion. This draft features fewer changes as compared to the previous two drafts. However, some points should still be noted (article numbers refer to third draft).

Registration
  1. Sounds and single colors are allowed to be registered as trademarks. (Art. 8)
  2. Generic names, devices and model numbers cannot be registered based on acquired distinctiveness. (Art. 11)
  3. Multiple-class applications are allowed. (Art. 22)
  4. Electronic filing is available. (Art. 21)
  5. During the substantive examination of a trademark application, an “examination opinion” may be issued if the Trademark Office believes the application needs to be further explained or amended. The applicant must file a response to the Trademark Office within 30 days from the date that the opinion is received. (Art. 32)
  6. The Trademark Office may cancel ex officio the preliminary approval for registration if finds the application was filed fraudulently or by means of unfair competition. (Art. 35)
  7. The statutory term for filing an appeal against a rejection of an application is extended to 30 days. (Art. 37)
Assignment and License
  1. A request for change in name or address of an applicant or a registrant may not be withdrawn after being filed with the Office. (Arts. 26, 44)
  2. A trademark license that is not recorded by the Trademark Office may not be used against any third party acting in good faith. (Art. 47)
Use of Trademark
There is a broader definition of trademark use, with emphasis on (1) the purpose of production or business operations and (2) public recognition of the sign being used as
a trademark. (Art. 51)

Dispute of Rights
  1. Broader protection against bad-faith applications, which will include any application filed with prior knowledge of another trademark due to contract, business, geographical or other relations. (Art. 34-1)
  2. With respect to non-identical or non-similar goods/services, the protection of well-known marks is limited to highly creative and highly reputable well-known marks. (Art. 34-2)
  3. Only a prior right holder or an interested party has the right to file an opposition. (Art. 36)
Trademark Enforcement
  1. Heavier penalties will be imposed for infringements repeated twice or more within five years. (Art. 64)
  2. When claiming compensation for trademark infringement, the trademark owner shall present evidence to prove use for three consecutive years. Otherwise, the infringer is not liable for monetary remedies. (Art. 67)
  3. The maximum statutory compensation for trademark infringement has been doubled to RMB 1 million (US $160,000). (Art. 67)
The third draft of the amendment to the PRC Trademark Law is not the final revision. The amendment of the Law is ongoing. INTA submitted  comments on the latest draft to China’s State Council Legislative Affairs Office in October 2011.


Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association