February 2023
Joyce Wen and Teresa Huang
Since its implementation on March 1, 1983, the current Trademark Law of the People’s Republic of China has been revised for four times in 1993, 2001, 2013 and 2019. On January 13, 2023, the China National Intellectual Property Administration issued the Revised Draft of the Trademark Law of the People’s Republic of China (Draft for Comments) (hereinafter referred to as the “Draft for Comments”), which is a larger revision, and this article aims to briefly explain the key points of this Draft for Comments for reference.
1. Added the types of trademark registration.
The Draft for Comments stipulates that a mark that can be used to identify and distinguish the origin of goods or services, including words, graphics, letters, numbers, three-dimensional signs, color combinations, sounds or other elements, as well as combinations of the above elements, can be applied for registration as a trademark. This provision will lay the legal foundation for the future registration of new types of trademarks such as sound trademarks and smell trademarks. Enterprises may pay attention to the possibility of applying for registration of such new trademarks.
2. If a trademark is objected and not registered, the review procedure will be cancelled.
Article 39 of the Draft for Comments provides that if the intellectual property administrative department of the State Council makes a decision not to approve a trademark registration, and the objected party is not satisfied with the decision, it may bring a suit in the people’s court within 30 days from the date of receiving the notice. It can be seen that after a trademark is objected and the Trademark Office makes the decision not to register it, the review procedure will be cancelled.
3. Shortened the trademark announcement period.
According to Article 36 of the Draft for Comments, where the registration of a trademark is approved after an objection to its registration is found to be unsubstantiated upon examination, the time when the trademark registration applicant has the exclusive right to use the trademark shall commence from the date of the expiry of the two-month period of the preliminary examination announcement, which is shortened from the three-month period as specified in the current Trademark Law. Therefore, the relevant interested parties should pay particular attention to the fact that if they have any objection to a trademark after the preliminary examination announcement, such objection should be raised within two months.
4. Enhanced the obligation to use trademarks.
This revision enhances the obligation to use trademarks in order to clean up zombie trademarks in a timely manner. According to Article 61 of the Draft for Comments, a trademark registrant shall, within 12 months after every five years from the date of approval of the registration of the trademark, explain to the intellectual property administrative department under the State Council the use of the trademark on the approved goods or the justifiable reasons for not using the trademark. The trademark registrant may make a centralized explanation of the use of multiple trademarks within the above-mentioned period. If no explanation is made at the expiration of the time limit, the intellectual property administrative department of the State Council shall notify the trademark registrant. If the trademark registrant fails to explain within six months from the date of receipt of the notice, it shall be deemed to have abandoned the registered trademark, and the intellectual property administrative department of the State Council will cancel the registered trademark.
5. Strengthened the anti-dilution protection of well-known trademarks.
In the original provision on cross-category protection of well-known trademarks, the scope of protection is limited to well-known trademarks registered in China, and the person whose interests are damaged must be the “trademark registrant”. However, this revision extends the scope of protection to well-known trademark holders at home and abroad, which means that well-known trademarks can be protected on an across-category basis, regardless of whether the registration is granted or not, and whether the trademark rights are registered in China or not. In this regard, it should be noted that the condition that the trademark concerned is known to the “relevant public” shall be satisfied for being protected as a well-known trademark.
6. Further regulated the malicious trademark registration.
The Draft for Comments clarifies the specific circumstances of malicious application for trademark registration, including “(1) a large number of applications for trademark registration not for the purpose of use, which disturbs the order of trademark registration; (2) applying for trademark registration by deception or other improper means; (3) an application for registration of a trademark that is detrimental to the interests of the State, the social and public interests or has other major adverse effects”, etc. At the same time, the marks “that are contrary to the core socialist values” or “harmful to the excellent traditional Chinese culture” and “the domestic geographical names known to the public” are prohibited from being registered as a trademark. Moreover, Article 45 of the Draft for Comments provides for the compulsory transfer system for maliciously registered trademarks, specifying that “in case of preempting the registration of a trademark that has been used by others and has a certain impact, the prior obligee may request to transfer the registered trademark to his own name.” In addition, Article 67 of the Draft for Comments stipulates that where an applicant maliciously applies for the registration of a trademark, the department responsible for trademark law enforcement shall give a warning or impose a fine of not more than RMB50,000; If the circumstances are serious, a fine of not less than RMB50,000 but not more than RMB250,000 may be imposed. Any illegal gains shall be confiscated.
The above is a brief introduction of the Draft for Comments. For the above-mentioned key points, the relevant enterprises and persons may plan ahead for trademark issues to cope with subsequent revisions.
The contents of all newsletters of Shanghai Lee, Tsai & Partners (Content) available on the webpage belong to and remain with Shanghai Lee, Tsai & Partners. All rights are reserved by Shanghai Lee, Tsai & Partners, and the Content may not be reproduced, downloaded, disseminated, published, or transferred in any form or by any means, except with the prior permission of Shanghai Lee, Tsai & Partners.
The Content is for informational purposes only and is not offered as legal or professional advice on any particular issue or case. The Content may not reflect the most current legal and regulatory developments. Shanghai Lee, Tsai & Partners and the editors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The contributing authors’ opinions do not represent the position of Shanghai Lee, Tsai & Partners. If the reader has any suggestions or questions, please do not hesitate to contact Shanghai Lee, Tsai & Partners.