| The long-awaited amendment to the PRC Trademark Law was finally passed and published on 30 August 2013. The new Trademark Law will come into effect on 1 May 2014. The focal points of the amendment are as follows: |
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Step up Efforts to Counter Plagiarism |
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Other than agency relationship between the parties concerned, as required under the current law, the new law will apply bad-faith clause to any relationship, based on which the applicant's bad faith is evidenced, thus greatly reduce the burden of proof on the legitimate trademark owner in fighting plagiarism. |
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Trademark agents are prohibited from representing any trademark application, which is filed in bad faith or infringes upon other's prior rights, such as copyright, name right or trademark with certain fame. |
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Registration and use of a trademark shall follow good-faith principle. |
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For the opposition based on conflict with prior rights, only the prior right owner or interested party may initiate the action, comparing to any one under the current law, which often causes bad faith delay in registration of a legitimate trademark. |
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| 2. |
Statutory Time Limit to Complete Examination |
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New trademark application – Nine months. |
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Appeal against disapproval of trademark application – Nine months, extensible for another three months under special permission. |
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Opposition and Appeal against the decision sustaining an opposition – Twelve months, extensible for another six months under special permission. |
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Invalidation based on inherent registrability of a trademark – Nine months, extensible for another three months under special permission. |
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Invalidation based on prior rights – Twelve months, extensible for another six months under special permission. |
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Cancellation based on non-use of a trademark – Nine months, extensible for another three months under special permission. |
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| 3. |
Restriction of Trademark Rights based on Registration |
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Good-faith use of a trademark in generic or descriptive manner will not be prohibited by existing registration of identical or similar trademark. |
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Bona fide prior use of a trademark with certain fame may continue within existing scope of goods/services despite registration of identical or similar trademarks by others. |
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Non-use of a trademark for over three years may result in failure of damage claim against trademark infringement. |
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| 4. |
Higher and Clearer Reference for Damage Claim and Fine against Infringement |
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Infringement with illicit business volume over RMB 50,000 may be fined up to five times of the said volume, while those under may be fined up to RMB 250,000. |
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Where loss of trademark owner and gain of infringer resulted from the infringement are not available, royalty of trademark license may be referenced in granting damage claim, which may go up to three times of the license royalty in case of serious infringement. |
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Court has the discretionary power to grant compensation up to RMB 3,000,000 in the case where no reference at all is available. |
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| 5. |
Scope of Protectable Trademarks is Extended |
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In addition to 3D design and color combination that are registrable under the current law, more non-conventional marks, such as sound mark, will be available for protection. |
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| 6. |
Procedural Efficiency |
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Multi-Class Application will be available. |
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E-Filing will be available. |
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Official action for clarification or amendment of trademark application during examination process will be available. |
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Trademark Review and Adjudication Board may suspend its examination over appeal or invalidation proceeding pending result of other relevant proceeding. |
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| 7. |
Existing Practice Formalized by New Law |
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In the cases of trademark disputes, anti-counterfeiting action, civil or administrative suit, the trademark owner may apply for recognition of well-known trademark status. |
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The use of registered trademark or unregistered well-known trademark as part of enterprise name constitutes unfair competition, which is prohibited under the PRC Anti-Unfair Competition Law. |
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| Please feel free to contact us for any information or assistance you may require. |
