China – a few comments on the Draft for Third Amendment to Trademark Law

In Insights, Uncategorized

14 December, 2009

A while ago the Chinese authorities released the “Opinion Solicitation Draft for Third Amendment to Trademark Law” (“the Draft”). The Draft proposes, among other things, the following changes which, should they be accepted, will make the Chinese Trademark law more efficient when it comes to handling trademark applications as well as opposition and infringement cases. The intention with the Draft propositions also seems to be to adopt an “international” view on trademarks that is more in line with trademark systems in many other countries.

The above mentioned standpoint is confirmed by that the Draft proposes to allow not only visual marks but also trademarks consisting of e.g. smell, movements or sound. This of course opens up huge possibilities and new ways of protecting trademarks.

Unlike the present Trademark Law, which only allows designation of goods in one class per application, the Draft allows goods in multiple classes to be designated in one application. This will certainly simplify the application process and hence most probably also reduce the overall time to have the desired trademark protection in place.

The Draft only allows the owner or an interested party of a prior trademark to file an opposition against a trademark application. This is different from the present Trademark Law which allows anyone to file an opposition against a trademark application.

Moreover the Draft also states that intentionally registering a trademark identical or similar to a third party’s trademark for goods in the same or a similar class is not consistent with the principle of good faith and thus not allowed. Registration of a trademark which copies a trademark of a third party bearing significant distinctiveness and influence which could easily mislead the public is not allowed, even if the goods is different. This will affirm the position of well known trademarks in Chinese Trademark law.

Statutory damages for repeated infringement are, according to the Draft, increased to a maximum of RMB 1 million (appr. USD 146 000). Furthermore the administrative authorities for industry and commerce will have the power to confiscate infringing goods. Moreover the Draft will also apply for infringement over the internet.

Furthermore the Draft eliminates one instance in the present review procedure for opposition of trademarks by allowing the opposing party to file an opposition directly with the Trademark Review and Adjudication Board. Hence the review of trademark oppositions is reduced from four instances, including administrative and judicial procedures, into three instances. Again this is something that will speed up the process which is beneficial certainly for the applicant but many times also for the opponent.

An overall conclusion is that if the above mentioned parts of the Draft is passed as law by the Chinese legislator it will strengthen the positions of the trademark owners in China significantly and also make the trademark system more efficient.

Peter Hermansson, Attorney at Law

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