China's Legislature Adopts Amendment to Trademark Law

On August 30, the third amendment to Trademark Law was approved at the 4th session of the Standing Committee of the twelfth National People’s Congress. This amendment will take effect on May 1, 2014.

The new amendment mainly focused on three aspects:

I. Multiple measures to facilitate trademark registrations.

It provides the sound can be registered as trademark, accepts multi-class applications, opens online applications, provides a procedure for communication between trademark examiner and the applicant, stipulated legal time limits to trademark examination and review, restructures opposition procedure which limits the opponent of prior right cases from any entity to prior right owner of interested party, and when opposition is not supported and the opposed mark is directly approved for registration by Trademark Office.

II. Further safeguard the fair and competitive market order.

It provides only Trademark Office, Trademark Review and Adjudication Board, and People’s Court can determine well-known trademarks in the processing of specific cases. It clearly prohibits the use of well-known trademarks in advertisements, promotions, exhibitions and other commercial activities. It provides the use of well-known trademarks, registered marks as trade names to mislead the public is unfair competition. It clearly prohibits the malicious registration of marks prior used by others due to business transactions and other relations. It provides trademark holder’s failure to prove actual use of previous three years, the infringer holds no liability. It adds legal liabilities to trademark agencies and requires them to keep clients’ commercial secrets, prohibits agencies acting malicious applications, registering other marks beyond its power.

III. Strengthen protections to exclusive trademark rights. 

It clearly defined the intended providing convenience to facilitate other entity’s infringement to exclusive trademark rights is a tort behavior. It increases fines to trademark infringement and increases legal circumstances for heavier punishment. Those committed twice or more of trademark infringement within five years of time, or having other serious infringing circumstances must be given a heavier punishment. It provides a punitive damage to malicious infringement of trademark rights in serious cases. It adds a conditional reversion of burden of proof when infringement is established and the court needs to decide on the amount of damages, provided the right owner has exhausted all methods of proof, and the evidence of infringement is mainly in the infringing party’s control, the court may order the latter to raise relevant evidence. It also increases the amount of statutory damages from current RMB 500,000 to RMB 3 million.

For more information, please refer to our brief in the Article section.

(Source: SAIC)