China's new trademark law entered into force on 1 May 2014
and ushers in key changes in the areas of trademark registration,
anti-piracy, well-known marks, proceedings and enforcement. This
new law strengthens the position of trademark holders to act
against infringement. And procedures will be shortened in time and
carried out more efficiently. The new law is of great importance
for companies that want to do business in China. However, there is
much uncertainty amongst Chinese practitioners how the law will
work in practice and what it will mean for the registration
process. We will continue to monitor and report on
China has long been criticised for being a safe harbour of
counterfeit and trademark hijacking and for trademarks rights being
violated on a large scale without repercussions. The rights of
trademark holders will now be protected more effectively and
efficiently. The new law is based on international standards, and
De Brauw contributed to drafting the new law before the
parliamentary committee in China. There are now substantial changes
for rightsholders to strengthen their trademark protection and
other new provisions, some of which are highlighted below.
Anti-Piracy – new good faith filing requirements
In order to deter the widely known practice of trademark
squatting, the new law lays down that both the application and the
use of the trademark must be in good faith. Trademark applications
for goods that are identical or similar to those covered by a
trademark that is already in use but not registered will be
rejected if the applicant had knowledge of the existing trademark
through a business or any other relationship. The addition of the
term any other relationship greatly reduces the burden of proof on
legitimate trademark owners.
Furthermore, trademark agents are prohibited from acting as
representatives on any trademark application that demonstrates bad
faith or infringes others' prior rights.
In order to curb 'unmeritorious' oppositions, the new
trademark law allows only prior rights owners or interested parties
to raise an opposition based on relative grounds, whereas
previously basically anyone could do so.
However, there will be no possibility to appeal the decision
once the opposition is rejected. The mark will automatically
proceed to registration. The only option left for the opponent is
to file an application to invalidate the registered mark. Brand
owners should be aware of how important collecting as much as
evidence as possible is for supporting their opposition claim.
Registration – multi-class filings
Traditionally, since a trademark could only be registered for
one class, multiple individual filings were frequently needed. Now,
one application can be filed for multi-classes. This will reduce
costs and will ease the administrative burden in trademark
portfolio management. Also, the requirement of a sign to be
visually represented has been deleted. Sound marks can now be
registered as trademarks.
The new law also provides an explicit recognition of the
protection of well-known trademarks. This is very important for
right holders in their battle against bad faith filings and
In infringement proceedings, the reversed burden of proof has
been introduced, which the plaintiff will benefit from. China is
trying to restrain trademark infringement by significantly raising
the amount for statutory damages and administrative penalties.
With these new provisions, China has made progress in protecting
trademarks. This will make the world's largest market
more attractive for brand owners to do business in. Foreign
companies that participate in or want to enter the Chinese market
should be aware of these changes when considering their IP
Still, there is much uncertainty amongst Chinese practitioners
about how the law will work in practice and what it will mean for
the registration process. De Brauw will continue to monitor and
report on developments.
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.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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”
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).