China has the largest population in the world, the largest e-commerce marketplace globally, is expecting 8 million trademark applications in 2018, has 200,000 IP cases in the courts, and more than 27,000 trademark infringement actions taken up by administrative authorities.
Given this market’s importance, INTA is working with members in China and Chinese authorities to ensure that it is the world’s safest for consumers and brand owners.
Trademark Law Amendments and Draft e-Commerce Law
As mentioned by State Intellectual Property Office (SIPO) authorities during INTA’s leadership delegation visit to Beijing in July (see INTA Bulletin report here
), China has commenced the process of amending its trademark laws.
INTA committees, including the Enforcement Committee, Famous and Well-Known Marks Committee, Trademark Office Practices Committee, and Anticounterfeiting Committee, have worked together to deliver comments
to the authorities.
A major focus of the comments is on improving tools for brand owners to combat the problem of bad-faith trademark applications. INTA provided several recommendations for improving anticounterfeiting enforcement as well.
INTA also commented on the need to extend deadlines, improve quality, and reduce red tape for brand owners—for example, by making license recordal optional and requiring quick approvals.
In addition, INTA recently submitted comments
on the China e-Commerce Law, which is in its third reading at the National People’s Congress, concerning the provisions in Article 42, which may create opportunities for counterfeiters to sell counterfeit goods online in China with impunity.
In pertinent part, INTA advised the following:
As drafted, Article 42 mandates that platforms must reinstate infringing listings whenever a seller submits
“a statement…to warrant that there is no infringement” accompanied with “prima facie evidence of no act of
infringement.” There is a significant risk that the law as drafted will allow counterfeiters to ‘game’ the
system by simply protesting every online listing takedown, and shifting the burden to the rights owner to
pursue the takedown through formal legal channels. Article 42 appears to take away the discretion that
platforms currently have to evaluate the “evidence” and decide whether to reinstate when a seller files a
counter-notice and that platforms will be obligated to “immediately stop the measures it has taken” and
reinstate the listing.
INTA’s Profile in China
INTA has added more members in China between 2010 and 2017 than in any other country, with 113 new members joining during that period. With 267 Chinese members as of 2018, this reflects a growth of over 55 percent in the last seven years. INTA is proud to claim 28 corporate members, reflecting a diverse range of Chinese companies, from high-tech innovators to classic Chinese brands.
China sends the second-highest number of registrants to the Annual Meeting (644 attendees in 2018), after the United States. This contingent will continue to grow; the number of attendees is predicted to nearly double in the coming decade.
Currently, one out of three attendees from Asia at the Annual Meeting comes from China. This proportion has grown since 2012, when one out of four attendees from the region was from China.
||Total Growth 2012–2018
INTA’s Activity in China
As demonstrated above, INTA has been increasing its activity since 2016 (the figures for 2018 reflect only eight months of activity). The Association is set to break records this year for activities organized in the country and interaction with third-party stakeholders and government.
Notably, INTA’s engagement with government officials has increased threefold in the last few years. These engagement opportunities come in many forms: policy dialogues organized through committees; leadership delegation visits; and government official participation in INTA events outside China, such as the Annual Meeting. As INTA focuses on its impact on the trademark policy landscape in China, this engagement is set to increase in the coming years.
INTA aims to continue growing its profile in China, with several new initiatives planned, beginning later this year. These will focus on engaging authorities on the trademark law revision, new tactics and techniques to fight online counterfeits, and prevention of cross-border trade in counterfeit products.
To learn more about INTA’s activity in China, please reach out to INTA’s Chief Representative for China, Seth Hays, at firstname.lastname@example.org
and INTA China Office Associate Vicky Dai, at email@example.com.
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. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2018 International Trademark Association