Earlier this year, the China National Intellectual Property Administration (CNIPA) released a draft proposing amendments to the PRC Trademark Law. The purpose of this publication was to allow the public to read and comment on the draft before its finalization. If implemented, these amendments would mark the fifth revision to the PRC Trademark Law, following previous amendments in 1993, 2001, 2013, and the most recent one in 2019.
While the amendments are not yet official, we have summarized several significant updates based on the current draft:
The proposed amendment takes a stricter stance towards “bad faith” applications. Article 22 gives detailed definitions on what would constitute as bad faith, something that isn’t available in the current PRC Trademark Law. Bad faith applications, as stipulated in said Article include
The amendments also details administrative punishment. As stipulated in Article 67, applicants of bad faith filings will be issued a warning or fined of less than RMB 50,000. For more serious offences, the fine can be up to a maximum amount of RMB 250,000. Furthermore, parties which suffer losses from the bad faith filings may file civil actions and are entitled to compensations, as stipulated in Article 83.
Article 36 shortens the opposition period from 3 months to 2 months from publication. Moreover, the current Trademark Law does not give the opponent the right to file review if their opposition is dismissed, but the opposed party is entitled to file a review if the opposition is upheld. Article 39 of the drafts removes this review.
As Stipulated in Article 5, In order to register a trademark, the applicant is obliged to actually use, or commit to use, the trademark on the relevant goods/services. The draft also ensures that usage after registration. It is stipulated in Article 61 that within 12 months after each 5 years since a trademark is registered, registrants must file a statement to the CNIPA proving usage of the mark or legitimate reasons for non-use.
The draft looks to erase the excessive hoarding of trademarks.Article 14 stipulates that an applicant can only register one identical mark for the same goods or service. While Article 21, further stipulates that a registration cannot be the same as a previous application filed or owned by the same party.However, the draft does stipulate repeated filings are not prohibited, they are:
Article 49 of added three more scenarios in which a registered trademark can be revoked. They are:
The draft introduces limitations in which a trademark owner cannot prohibit the usage of their trademark. According to Article 62, these scenarios are:
Furthermore, Article 9 of the draft stipulates that legitimate rights of others cannot be violated by trademark rights.
Keep in mind that as of this moment, the draft has not been finalized and could be subject to changes. Furthermore, our summary didn’t cover the entirety of the draft, which you can access here. We urge anyone with a vested interest in the Chinese IP ecosystem to study the proposed amendments and follow this development closely. In the meantime, if you have any questions related to IP, contact us at email@example.com. We will provide the best service according to your needs.