Updates on the Chinese Trademark Law

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The third amendments to the Chinese Trademark Law recently came into force on 1 May 2014. The key amendments are set out below:

• Time limits are set for CTMO and TRAB to examine cases.  For example, trademark applications should be examined within 9 months and opposition cases within 12 months.  This is a vast improvement from the previous practice where trademark cases could take years to advance.

• E-Filing and Multi-Class Filings are now available in China.
  

• In line with China’s efforts to curb trademark infringement activities, more severe punishment against infringement are introduced.  For example, maximum statutory damages has been increased to RMB3,000,000.  Punitive damages are available where the infringement activity is “serious”.

• China now accepts non-conventional marks, namely, sound and colour combination marks, as registrable trademark.  Sound marks include ring-tones, animal sounds, etc.

• Limitation of rights to commence opposition action; only those who “own prior rights” or who is an “interested party” may initiate proceedings.  With this provision, the previous practice of opposing a mark based on unrelated party’s registered mark will no longer be permitted, unless the opponent can show that it is an interested person.

• Imposing burden on trademark rights holders to provide evidence of three years’ prior use when seeking damages.  The new law also explicitly provide courts to grant preliminary injunctions within 48 hours.

• Use of the words “well-known mark” on products, product packaging or containers or in advertisements, exhibitions or other commercial activities is now prohibited.  Declaration of well-known status of a mark may be sought in the event of disputes.

The new law clearly shows China commitments towards building a strong and responsive IPR regime, although many uncertainties on the implementation of the amendments exist.  Nonetheless, we are hopeful that foreign trademark owners may now be in a better footing when dealing with infringers in China, and business owners would face a more efficient registry when seeking trademark registration in China.