JURISDICTION REPORT: CHINA
MAJOR CHANGES TO PRC TRADEMARK LAW Xiang Gao
Peksung Intellectual Property Ltd
Te Trademark Law of the People’s Republic of China was first promulgated in 1982 and entered into force in 1983; it was revised for the first time in 1993 and again in 2001. Te third amendment has been under discussion since 2003.
In 2009, State Administration for Industry and Commerce (SAIC) under the State Council of China submitted Trademark Law of the People’s Republic of China (draſt for comments) to the Legislative Affairs Office of the State Council. On September 2, 2011, the revised draſt was posted in Chinese online for public comments until October 8, 2011.
Compared to the current PRC Trademark Law, some major changes reflected in the draſt are summarised below:
• Sounds may be applied for trademark registration.
• Concerning words or devices forbidden to be used as trademarks, those having the nature of discrimination against any race were added, and “those having the nature of exaggeration and fraud in advertising goods or services” was amended to be “those deceptive enough to mislead the public in respect of the quality or the origin of the goods or other characteristics”.
• Acquired distinctiveness through use never applies to generic names, designs or models.
• Determining whether a mark is well known or not should be judged in administrative proceedings of a trademark registration, review and adjudication, management and in judicial proceedings of civil disputes. In other words, it can also be determined during the process of trademark registration but it can no longer be determined by judicial proceedings of administrative disputes.
• “Famous trademark” is added, and affirmation and protection of it can be referred to local laws and regulations of local government.
• It is clearly defined that geographical indications can be registered as certification marks or collective marks.
• Submission of application documents via electronic means is added. • Multi-class applications are allowable.
• If the China Trademark Office (CTO) thinks the content of the application needs to be explained or amended, it can issue an office action to the applicant, and the applicant may make explanation or amendment within 30 days as of the date of receipt of the office action. If it becomes law, we guess the office actions will increase and the appeals will decrease.
• As for trademarks published in the Trademark Gazette, if the CTO finds 70
“IT IS CLEARLY DEFINED THAT GEOGRAPHICAL INDICATIONS CAN BE REGISTERED AS CERTIFICATION MARKS OR COLLECTIVE MARKS.”
situations in violation of this law or the application is filed in deceptive means or other improper means, the office can cancel the published mark.
• According to current law, anybody can file trademark opposition. The draſt restricts the qualification of an opposer as the owner of prior right or the party of interest.
• According to current law, an appeal against a rejection must be filed within 15 days aſter receipt of the rejection. Te draſt extends the time limit to 30 days.
• The draft adds that the licence, not recorded in the CTO, should not be against bona fide third persons.
• The draft adds a complete article about fair use, which says “the proprietor of a registered trademark has no right to forbid others from properly using it if it contains (1) generic names, designs or models of the goods in respect of which the trademark is used; (2) contents which have direct reference to the quality, main raw material, function, intended purpose, weight, quantity or other characteristics of goods; (3) geographical names; (4) the shape which results from the nature of the goods themselves; (5) the shape of goods which is necessary to obtain a technical result; or (6) the shape which gives substantial value to the goods”.
• Concerning administrative enforcements against infringement, the draft adds that the administrative authority for industry and commerce shall punish the infringer severely if it conducts trademark infringement more than twice within five years.
In addition, several important articles of current Implementing Regulations of the Trademark Law were transplanted to the draſt. Tere is still ambiguity in the draſt and further debate and amendment are expected.
Xiang Gao is a partner and head of the trademark group at Peksung. He can be contacted at:
gxiang@peksung.com
World Intellectual Property Review November/December 2011
www.worldipreview.com
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