- Highlights of Latest Amendments to the Application Procedure under the Trademark Law of China
- August 27, 2014
- Law Firm: Lee Tsai Partners Attorneys-at-Law - Taipei Office
- The Amendments to the Trademark Law of the People's Republic of China which came into effect on May 1 this year are the third amendments to the law since 1982 (the previous two amendments were made in 1993 and 2001) with the largest scale of modification after ten years of exploration and solicitation of opinions from all members of the society. The State Council also promulgated the amended Regulations for the Implementation of the Trademark Law of the People's Republic of China on April 29, 2014. Like the new Trademark Law, the regulations also came into effect on May 1, 2014.
The amendments have three major objectives. First of all, the complicated trademark registration procedure is improved by modifying the trademark application procedure. Secondly, several new provisions are added to maintain the market order of fair competition to deal with prevalent malicious trademark registration and abuse of famous marks, including the specific prohibition against rushed registration of trademarks already used by others and learned in the course of business dealings. Finally, intensified trademark protection is provided to address the circumstances where trademark infringing acts are not effectively deterred. For malicious infringement in material aspects, one to treble damages may be awarded, and the ceiling of the statutory damages which may be awarded at the discretion of a people's court is increased from RMB500,000 to RMB3,000,000.
The trademark application procedure is modified to address the issue of continued complaints from applicants about excessively long waiting period for granting trademark rights in China due to the fact that China has been one of the countries in the world with the largest volume of new applications for many consecutive years. According to statistics released by the Trademark Office of the State Administration for Industry and Commerce of China, trademark applications in China each year have exceeded one million cases for four consecutive years with 1.072 million cases in 2010, 1.417 million cases in 2011, 1.648 cases in 2012 and even 1.882 million cases in 2013, which is a new record. Changes to the trademark registration application procedure are highlighted as follows:
1. Addition of trademark registration application for one case with multiple classes
When filing application, trademark applicants in all countries are required to designate the goods or service classes for trademark usage. In addition, most countries adopt the Nice Classification (consisting of a total of 45 classes with Classes 1 through 34 being goods and 35 through 45 being services). Currently, Taiwan and most other countries allow applicants to apply by way of "one case with multiple classes." To wit, one trademark may be designated for use on multiple classes. The advantages lie in consistent trademark application examination time and examination standards. This is also favorable to subsequent administration over the existence of rights.
Before the new law came into effect, applicants in China were subject to the restriction that application should be filed for "one case with one class." To wit, one trademark is designated for one class. If three classes are to be designated, three applications should be filed. This approach is problematic in that since various applications are subject to different examination time and standards with different registration timing, it is more inconvenient with respect to the subsequent administration over the existence of rights. After May 1 this year, Article 22 of the new law specifically stipulates that applicants may apply for "one case with multiple classes" when applying to the Trademark Office of China.
2. Addition of the trademark examination communication procedure between the Trademark Office and applicants
Current practices of trademark application registration examination in China show that if there is any omission in the contents provided in an application form (e.g., a portion of the application details is masked by a seal affixed to the application form) or if an examiner has any doubt regarding whether such trademark can be registered, the application is promptly rejected whether such omission or doubt can be corrected through the applicant's explanation or modification. As a result, the applicant has to re-apply. This is not only time and money consuming but may also lead to the issue of rushed registration of the trademark by another party due to the deferred application date.
A new and modified examination procedure is added to Article 29, which specifically stipulates that if it is believed at the time of trademark examination that trademark registration details should be explained or modified, the applicants may be requested to provide explanation or make corrections so that the applicants may state their opinions in time. Article 23 of the Regulations for the Implementation of the Trademark Law provides that applicants are required to provide their explanation or corrections within 15 days upon receipt of a notice from the Trademark Office.
3. Addition of a statutory period for trademark examination
Application examination by the Trademark Office in China used to take as long as 30 months due to huge caseloads. In recent years, the examination efficiency has been improved with an average examination period of around one year, thanks to the adoption of various measures. Such a long application time is quite troubling to trademark applicants and the uncertainties in trademark registration have also greatly impacted product marketing schedules.
To improve examination efficiency, the new law imposes an examination period for all trademark-related applications and disputed cases. Article 28 of the new law provides that the Trademark Office shall complete the examination within nine months upon receipt of trademark registration application documents. Article 34 of the new law stipulates that in response to the reconsideration application from applicants dissatisfied with the application rejection decisions of the Trademark Office, the Trademark Review and Appraisal Board shall render a decision within nine months. In addition, Article 35 of the new law provides that in case of opposition to trademarks announced as a result of preliminary examination, the Trademark Office shall render a decision as to whether the trademarks will be registered within 12 months after the announcement period expires.