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Transitional Arrangement for the New PRC Trademark Law




by:
Alan C. W. Chiu
Cherry Q. Jin
Mayer Brown JSM - Hong Kong Office

 
April 23, 2014

Previously published on April 22, 2014

On 15 April 2014, the State Administration for Industry and Commerce (SAIC) of the People's Republic of China issued a notice detailing the transitional arrangement for handling trademark cases between now and 1 May 2014 when the new PRC Trademark Law will become effective.

Following on from our legal updates "China's New Trademark Law Introduces Key Changes" of 13 September 2013 and "China's New Trademark Implementing Regulations" of 19 December 2013, this update supplements the transitional arrangement and the computation of examination time limits as follows:

Proceedings before the China Trademark Office (CTMO)

  • Regarding trademark applications, oppositions, modifications, assignments, renewals, invalidations, cancellations and licence recordals filed with the CTMO before 1 May 2014 (excluding that date), if decisions are made by the CTMO on or after 1 May 2014, the new PRC Trademark Law will apply with the only exception being that the eligibility of the opponent in opposition cases and the grounds of opposition will continue to be governed by the old law.

  • Examination time limits will be introduced for the trademark registration, review, opposition, invalidation and cancellation procedures under the new PRC Trademark Law. For trademark applications, oppositions and cancellations filed before 1 May 2014 (excluding that date), the statutory examination time limits will be counted from 1 May 2014 onwards. However, if the gazettal period of the opposed mark is less than three months by 1 May 2014, the time limit will be calculated starting from the expiry of the gazettal period.

Proceedings before the China Trademark Review and Adjudication Board (TRAB)

  • Regarding review of a refusal decision filed with the TRAB before 1 May 2014 (excluding that date) but adjudicated on or after 1 May 2014, the new law will apply.

  • Regarding review of an opposition decision filed with the TRAB before 1 May 2014 (excluding that date) but adjudicated on or after 1 May 2014, the old law will apply to the opponent's eligibility issue whilst the procedural issues and substantive issues will be governed by the new law.

  • For invalidation and review of a cancellation decision filed with the TRAB before 1 May 2014 (excluding that date) but adjudicated on or after 1 May 2014, the procedural issues will be governed by the new law whilst the substantive issues will be decided under the old law.

  • The examination time limits for all TRAB cases filed before 1 May 2014 (excluding that date) will be counted from 1 May 2014 onwards.

Trademark Infringement

  • Any trademark infringement that has occurred before 1 May 2014 (excluding that date) will be subject to the old law. However, if the infringing acts occurred before 1 May 2014 and are still ongoing as of 1 May 2014, the new law will apply.

  • Use of the phrase "well-known trademark" on goods, their packaging or containers, or in advertisements, exhibitions or other commercial activities is prohibited under the new law. An exception is provided if such goods are made available in the market before 1 May 2014.

  • The Administration for Industry and Commerce (AIC) is responsible for enforcing the new provision concerning improper use of the phrase "well-known trademark". Actions should be taken by the AIC of the local city ("Local AIC") where the offending "well-known trademark" owner is located or resides. If the violation is uncovered by the AIC of another city, the case should be transferred to the Local AIC for further handling. If the offending "well-known trademark" owner is not located or residing within China, or if the jurisdiction of the Local AIC is in dispute, the SAIC will step in and take charge of the matter.



 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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Author
 
Alan C. W. Chiu
Practice Area
 
Intellectual Property
 
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