Starting from May 1, 2014 substantial changes will come into force in the Trademark Law of China.
You can find below, without claiming to be complete, some of the most relevant points:
- Sound marks are registrable according to the New Trademark Law of China
Article 8 of the Trademark Law has been reformulated as follows: “In respect of any visual sign capable of distinguishing the goods or service of one natural person, legal entity or any other organization form that of others, including any word, design, letters of an alphabet, numerals, three-dimensional symbol, combination of colours, sound and their combination, an application may be filed for registration”.
- From “single class” to “multi class”
According to the law in force until May 1, 2014, a trademark application can only claim protection for one class; consequently, it is necessary to file more applications if more classes are claimed.
The New Law provides, however, that the applicant may file an application for registration of a trademark for goods in multiple classes.
- Amendments to the opposition
According to the Law in force until May 1, 2014, anyone can file an opposition against a trademark application, within three months from the date of publication.
The New Law provides that only prior rights holders and interested parties may file an opposition on the ground of relative grounds, while anyone can continue opposing for absolute grounds.
According to the Law in force since May 1, 2014, any party may appeal the opposition decision with TRAB and further may initiate legal proceedings in Courts. The New Law confirms the procedure only if Chinese Trademark Office makes a decision in favor of the opponent. If such decision is, instead, issued in favor of the trademark applicant, the opponent could not appeal the decision and has only the possibility to take invalidation action with the TRAB after the opposed mark is registered.
- Cancellation action for non-use
According to the Law in force since May 1, 2014, you can file a cancellation action for non-use if the use of the registered mark has ceased or has been interrupted for more than three consecutive years.
The New law provides that cancellation action for non-use can be filed if the use of the registered mark has ceased or been interrupted for more than five consecutive years.
- Stricter sanctions for counterfeting
According to the provision of article 7 of the New Trademark Law of China, “registration and use of the trademarks shall conform to the principles of honesty and credibility”.
Under the new Law, the amount of damages for infringement of trademark may grow.
- Bad faith
The actual article 15 of the Trademark Law of China provides that: “Where any agen or representative registers, in its own name, the trademark of a person for whom it or he acts as the agent or representative without authorization therefrom, and the later raises opposition, the trademark shall be rejected for registration and prohibited from use”.
The new Trademark law has added a further paragraph, providing that: “ Where a trademark in respect of which the Application for registration is filed for use for identical or similar goods is identical to or similar with another person’s trademark, previously used but not registered, if the applicant and the latter has contract/business relationship or other relation not included in provisions of the preceding paragraph, because of which the applicant is fully aware of the existence of the mark, and the latter raises oppositions, the trademark shall be rejected for registration”.
- Abbreviation of terms
The New Trademark Law provides that the examination of trademark application is made within 9 months from the filing of the application. Similarly, the Law provides similar terms (9 or 12 months form the receipt of the documentation by the Chinese Trademark Office) for other cases concerning trademark’s life.