Upcoming changes to the Trade Mark Law in China

28 November 2013

On 1 May 2014, important changes to the Trade Mark Law in China will come into effect. In this article, we set out some highlights from the upcoming changes.

  • Sounds can be registered as trade marks. No specific test for the registrability of sound marks is provided, so sound marks should satisfy the registrability requirements that apply to other kinds of marks.
  • Multi-Class applications will be made available, which willease administrative work and reduce costs in relation to trade mark portfolio management. It is not yet known, though, whether official filing fees will be adjusted accordingly.

  • A general principle, taken from the General Provisions of the Civil Law and stating that registration and use of trade marks should follow the principles of honesty and trustworthiness, will act as a “catch-all” provision to govern trade mark applications and use. This principle is not a ground in trade mark oppositions or trade mark invalidations and its significance has yet to be seen.

  • The registration of another person’s unregistered mark that has been used previously on identical or similar goods is prohibited if there is evidence showing that the applicant has clear knowledge of that other person’s mark through contractual, business or other relationships.

  • An opponent who relies on relative grounds must be the owner of the earlier right or an interested person. Any person may file an opposition on absolute grounds of refusal. With this amendment, the previous practice of relying on an unrelated party’s registered mark to file an opposition will no longer be possible, unless the opponent can show that it is an interested person.

  • If the Chinese Trademark Office rejects an opposition, the opposed mark will be registered. The opponent may then file an application with Trademark Review and Adjudication Board (TRAB) to invalidate the registered mark. This is a change to current practice, where the opposed mark remains unregistered while an opponent files a review with the TRAB.

  • Any person may file a cancellation against a registered mark if the mark has become a generic name for its designated goods/services. To guard against this, rights holders should use the symbol “®” alongside the registered mark, monitor the use of the mark in the market, and actively enforce their rights against infringers.

  • In an invalidation handled by the TRAB, if the earlier right needs to be determined on the basis of the decision of the court or the administrative authority in another case, the invalidation can be suspended. The proceedings can be restored when the reason for the suspension no longer exists.

  • Rights owners will have to demonstrate that their “use” (or in infringement cases, the infringer’s “use”) is “to identify the origin of the goods”. It will be interesting to see if there is certainty and consistency in determining whether OEM use will amount to trade mark infringement or will be sufficient to defend against non-use cancellation.

  • If, before the filing date of a registered mark, another person has used an identical or similar mark for identical or similar goods and the mark has acquired a certain level of influence, the registered mark owner will not have the right to stop that other person from using the mark in its original scope, but may ask that other person to use an additional sign to distinguish the marks.

This article is part of the BrandWrites Newsletter for November 2013