On Sept. 2, 2011, the Chinese Legislative Affairs Office of the State Council released The Draft for Public Comments on Amendment of China Trademark Law (the “Draft”) on its official website www.gov.cn. Upon comparing the Draft for comment with the current China Trademark Law, NTD summarized the highlights as follows:
1. Change in the protection for Color Marks
Under the current Trademark Law, the trademark of “color combination” can be applied for registration. The Draft changes the “color combination” to “color” by deleting “combination”. It suggests that the “single color” may have the chance to be registered as a trademark.
2. “Sound” allowed for trademark registration and protection
Under the current Trademark Law, sound marks are not registrable. According to Art 8 of the Draft, sound marks can be applied for registration.
3. The multi-class application allowed
Under the current Trademark Law, separate trademark applications should be filed if one trademark is applied for registration in multiple classes. Art 22 of the Draft for comment adds the provision of the multi-class application. The related implementing regulations will be formulated by the SAIC (State Administration of Industry and Commerce).
4. Restoration of the “Trademark Examination Advice” system
The “Trademark Examination Advice” system was adopted before the amendment to the Trademark Law in 2001, which had been designed to facilitate the communication between the examiners and the trademark applicant. In the 2011 amendment, this system was deleted for the sufficiency of trademark examination. Now, Art 31 of the Draft restores this system.
5. The more detailed prohibitive clauses against trademark squatting
Article 34 of the Draft set forth more detailed clauses on trademark squatting (Plan 2), which lists three cases to be prohibited:
(1) The trademark application shall not damage other prior rights of a third party, nor the applicant register a mark that is already in use by a third party and has certain influence in unfair means.
(2) The applied mark shall not be registered if it is similar to or identical with a mark already in use in China by a third party in respect of similar or identical goods, as a result of the applicant’s express knowledge of existence of the third party’s mark via contractual, commercial , geographical, or other connections.
(3) The applied mark shall not be registered if it is a copy of the registered trademark of the third party with comparatively strong distinctiveness and certain influence in respect of dissimilar or different goods, and is liable to cause confusions.
6. Changes in the trademark opposition system
(1) The restricted qualification of the trademark opponent
Art. 36 of the Draft provides that the opposition can be filed by “the prior right owners or the party of interests” only. However, the current system allows any person to file an opposition against other’s trademark. The new clause will help prevent the malicious trademark oppositions.
(2) The restricted grounds for trademark oppositions.
The current trademark law allows an opposition on the base of any grounds. The Draft will restrict the opposition grounds to Arts. 13, 15, 16, 31, 33 and 34, which means the opposition could be filed only on the grounds of the damage to the opponent’s legal rights. And if the opponent claims the applied mark violates the absolute prohibitive clauses, such as one being similar to or identical with a country’s name, fraudulent, liable to cause improper social influence, in lack of distinctiveness, etc., the opposition will not be accepted.
(3) The simplified procedure for the reviews on trademark oppositions
Art. 38 of the Draft provides that if the TMO opposition decision grants the registration, the registration certificate will be issued to the opposed party. If not satisfied, the opponent may file a review application with the TRAB (Trademark Review and Adjudication Board) for cancelation of the registered mark; while if the TMO opposition decision refuses the registration, the opposed party can file a review with TRAB. In comparison of the current opposition rules, the opposed party can obtain registration sooner in case of its application is found to be justified, which avoids the delays in getting registration due to possible malicious oppositions.
7. Protection of the exclusive right of registered trademarks
(1) Expressly stipulating “using signs similar to or identical with other’s registered trademark as goods name or goods decoration” as an act of trademark infringement.
(2) Imposing aggregated penalties on the trademark infringement act exceeding twice within 5 years.
(3) Increasing the statutory damages from the current RMB500,000 to 1,000,000.
(4) Stipulating submission of use evidence of the last 3 years and other related evidence if damages are demanded by the trademark registrant.
8. The terms to file reviews all extended to 30 days
Art 37 and 58 of the Draft provides that if not satisfied with the TMO’s decision of trademark rejection, cancelation of the preliminary publication, or cancelation of registration, the party concerned can file a review with the TRAB within 30 days. The current law stipulates the above terms for reviews are all 15 days.
