China: China Issues Amended Implementing Regulations Of The New Trademark Law

BACKGROUND

China's new Trademark Law ("new law") will come into effect on May 1, 2014. For our earlier comments on the new law, click here.

To implement the new law, new regulations have been drafted, the Draft Implementing Regulations ("Draft IR"), which have since been submitted to the Legislative Affairs Office of the State Council of China (LAO) for review. Last month the LAO issued a call for public comments.

The current Draft IR is subject to LAO's review; LAO is further entitled to make additional amendments based on public comments before submitting the amended draft to the State Council for a final review. The profession have been submitting comments, and we will keep you posted on further developments.

SUMMARY

The Draft IR details the procedures of trademark applications and reviews, and clarifies the uncertainties or ambiguities under the new law. It introduces some new systems and also further regulates the practices of trademark agents in China.

  • Of note, the Draft IR tries to streamline and clarify existing procedures. This is done through detailing e-filing provisions, introducing the "division of trademark applications" for partially refused applications, allowing for settlement negotiations, and specifying circumstances where non-use of a trade mark may be justified, etc.
  • The Draft IR also attempts to facilitate enforcement of trademark infringement. Key efforts include providing for calculation of illegal turnover, specifying circumstances where a seller can claim innocent infringement, and stipulating how right holders assist on verification of suspected infringing products in AIC raid cases, etc.
  • Finally, the Draft IR states that assignor and assignee are jointly responsible for recording the trademark assignment with the China Trademark Office (CTMO).

We outline in detail several notable points below.

1. TRADEMARK APPLICATION REQUIREMENTS AND PROCEDURES AMENDED

a. Requirements of filings for sound marks and clarification of e-filing.

Sound mark applications

As the new law allows sound marks to be eligible for registration as a trademark, the Draft IR specifies requirements of the filing documents for sound mark applications. This includes a sound sample, explanation on how the mark is used, and a description.

E-filings clarified

The Draft IR states that e-filing applications for registration of trademarks under the new law refers to filing trademark registration applications electronically via the internet, and in a format designated by CTMO. It specifies that where the documents are submitted to CTMO/TRAB electronically:

  • The date on which a party submits documents to CTMO/TRAB shall be the date on which the documents are received by CTMO/TRAB's electronic system;
  • The documents submitted shall be subject to CTMO/TRAB's database records.

It also states that various kinds of documents issued by CTMO/TRAB can be served on the parties concerned by electronic means, and such documents shall be deemed duly served on the party 15 days after the date on which the document is sent.

b. Explanations/corrections upon Examiner's Advice

The new law reintroduces Examiner's Advice in the trademark application process. The Draft IR further provides for a 15-day time limit for the applicant to provide explanations or corrections upon receiving CTMO's notification.

c. Division of application

The Draft IR allows for the "division of trademark applications" for partially refused applications, allowing the preliminarily approved goods/services to proceed to registration and dealing with the rejected goods/services separately. The applicant may, within 15 days upon receipt of CTMO's partial refusal notification, request the CTMO divide the application so that the goods preliminarily approved are moved to a new application. The application on the goods preliminarily approved shall be allocated a new application number and be published with the filing date of the original application's filing date.

We understand this provision shall apply to both multi-class and single class applications, though this is not expressly stated in the Draft IR. However, the Draft IR states that the division shall not apply to international applications designating China for territorial extension. This seems to be an additional advantage domestic applications may have over Madrid applications.

2. TIME LIMITS

As the new law provides for new time limits for CTMO/TRAB's examination of cases in trademark application/opposition, invalidation and cancellation procedures, corresponding provisions/changes in this regard are included:

  1. The Draft IR states that the following periods are excluded from the time limit for examination of the cases:

    1. The period of service of CTMO/TRAB's documents;
    2. The time needed for the party concerned to provide explanations or corrections where necessary and for another round of evidence exchange;
    3. Where different applicants apply on the same day for the registration of identical or similar trademarks in respect of the same or similar goods, the time for the applicants to submit evidence of prior use of the trademarks before applying for registration, or to draw lots;
    4. Where the party concerned is changed, the time needed for re-notifying the party to submit defence;
    5. Where in an examination/review, the involved prior rights are to be determined based on the results of another case being tried by a court or handled by an administrative agency, the period of waiting for the results of another case;
    6. The time of waiting for the parties to negotiate a settlement as per their application.
    Such provisions are aimed to protect the legitimate rights/and interests of the party concerned, as well as avoid inaction during the statutory examination time limit.
  2. The current 30-day time limit for the applicant to make supplements or amendments as required by CTMO/TRAB has been shortened to 15 days, and the current 3-month time limit for the applicant to file supplemental submissions in opposition or TRAB's review procedures has been shortened to 30 days.
  3. Clear rules for calculation of time limits/deadlines are added in the Draft IR, which states that, unless otherwise specified in the new law –

    • the first date is excluded in calculating all time limits;
    • for deadlines calculated in years or months, the deadline falls on the corresponding date of the last month of the deadline, or the last date of that last month in case there is no corresponding date in that month;
    • in case the deadline falls on a statutory holiday, it will automatically be extended to the next working date thereafter.
    Currently the calculation relies on General Principles of Civil Law and the Civil Procedure Law in China. The provisions in the Draft IR will make the parties' calculation of the deadlines more convenient.

3. CERTIFICATION REQUIREMENT CONCERNING THE IDENTITY/LOCUS STANDI OF THE APPLICANT

The Draft IR expressly confirms that when filing an application for registration of a trademark, or filing other applications (for change, assignment, renewal, opposition and cancellation etc.) of a trademark with CTMO, the applicant shall submit a copy of certification document (i.e. Certificate of Incorporation or identify certification etc.) confirming their identity/locus standi.

4. FAILURE OF THE APPLICANT TO PAY REQUIRED FEES FOR FILING TRADEMARK APPLICATIONS WILL RESULT IN CTMO'S NONACCEPTANCE OF THE FILINGS

The Draft IR clarifies that if the applicant does not pay the official fees upon filing any application, the CTMO shall not accept the application and shall notify the applicant in writing. Current regulations do not prescribe how to deal with a case where fees are not paid.

5. FORMALITIES FOR TRADEMARK ASSIGNMENT

Current Regulations provides that the assignee files a recordal of any assignment. Since there are often falsified assignments, the Draft IR states that the formalities for the assignment shall be handled jointly by the assignor and assignee or by an agent entrusted by both parties. For assignment of pending applications, the provision in the Draft IR remains the same, i.e. the applicant of the trademark application shall go through the formalities of assignment with CTMO (as is currently the case).

6. TRANSFER FOR REGISTERED TRADEMARKS

The Draft IR lists succession and others as statutory reasons other than assignment for transfer of registered trademarks.

7. RECORDAL OF TRADEMARK LICENSE CONTRACT

The new law states that an unrecorded trademark license cannot be used against third parties acting in good faith. The Draft IR therefore expressly clarifies that the recordal shall have the effect against third parties acting in good faith as of the date of the publication of the recordal by CTMO.

8. RECORDAL OF PLEDGE OF REGISTERED TRADEMARKS

The Draft IR adds an article on the recordal of pledge of registered trademarks. It states that where a party pledges the exclusive right to his/its registered trademark, the pledgor and the pledgee shall enter into a written pledge contract and jointly record such pledge with CTMO which shall publish the same.

9. OPPOSITION PROCEDURES

To implement the new law's new provisions on opposition procedures, the Draft IR includes the following notable additions/ changes:

  1. The Draft IR expressly confirms that the opponent shall provide certification documents concerning their identity and locus standi (i.e. Certificate of Incorporation or identify certification etc. of the opponent) when filing an opposition. This is not explicitly required in the current Regulations.
  2. Opponent is also required to provide relevant evidence/certification proving it is a prior rights holder or an interested party for oppositions filed on relative grounds.
  3. The Draft IR specifies such circumstances under which CTMO shall not accept the opposition application, as follows:

    1. The opponent is not eligible for filing the opposition, e.g., it/he does not have locus standi either by being a prior rights holder or being an interested party in respective of opposing the mark on the basis of relative grounds;
    2. The opposition is filed not within the statuary time limit;
    3. The opposition does not fall under the scope of relative/absolute grounds as provided in the new law;
    4. Lack of specific grounds, facts and legal basis;
    5. The same opponent files another opposition against the same mark on the basis of the same grounds, facts and legal basis;
    6. The submission does not meet the language requirement (i.e. shall be in Chinese);
    7. Other circumstances of being not eligible for acceptance.
  4. The current 3-month time limit for the opponent to file supplemental submissions to an opposition is shortened to 30 days. This is one of the most unreasonable amendments as parties (especially foreign parties) will need more time to properly collect pertinent evidence to support the opposition. Instead, the Draft IR confirms that CTMO may consider the new factual evidence filed out of time during cross examination, which will likely have significant influence on the case provided the other side has a right to reply.

To read this article in full, please click here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions