Chinese Trademark Law Implementing Regulations Consultation

British Embassy Beijing

January 2014

Summary

The State Council Legislative Affairs Office (SCLAO) has launched a public consultation on draft Implementing Regulations for the revised Chinese Trademark Law. The Implementing Regulations mostly cover administrative procedures, with more substantive interpretations of the law featuring in separate Examination Guidelines. The deadline for comments to the consultation is February 10. The revised law – and the revised Implementing Regulations – will come into force on May 1, 2014.

Detail

The Chinese State Council Legislative Affairs Office (SCLAO) has published draft revisions to the Implementing Regulations for the amended Chinese Trademark Law.

An unofficial English translation of the proposed revisions is below. The official announcement (in Chinese) is here.

The consultation deadline is February 10.

Comments can be submitted via the email address sbtl@chinalaw.gov.cn or the postal address:

1750

: 100035

People’s Republic of China

SCLAO requests that all submissions should be marked with the phrase:

The UK government will not be directly participating in the consultation. However, we are interested to read the comments of UK stakeholders as we continue our bilateral cooperation with China on intellectual property. Please send any submitted comments you would like to share with us to Tom.Duke2@fco.gov.uk.

Background

The National People’s Congress (NPC – China’s legislature) passed revisions to the Chinese Trademark Law in August 2013. The revised law will come into force on May 1. The Implementing Regulations are one of several measures under the Trademark Law which will determine how new provisions are used in practice.

Consultation content

The draft extends the length of the Implementing Regulations from 59 to 111 articles. The following is a summary of several of the new provisions included in the draft. This is not a comprehensive list and is intended as a guide only. Details should be checked with the original (Chinese language) document:

  • Formal responsibility is introduced for trade mark agents to forward documentation to their clients during various trade mark procedures [Article 5].

  • The draft regulations expand further on requirements for registration of 3D trade marks and sound marks. Sound marks will be introduced for the first time by the revised law and applications will require a sample, musical notation (where possible) and a written description [Article 13].

  • Multiple-class applications will be introduced in China for the first time by the revised law. The draft regulations allow for the division of applications when rejections are issued for certain (sub) classes [Article 24].

  • Deadlines for responding to various procedures are included in the draft regulations. For example, deadlines to respond to supplementation/amendment/explanation requests are 15 days [Article 18; Article 24-25; Article 60]. Requests for further evidence in opposition and invalidation cases are required in 30 days rather than 3 months as under the previous system [Article 29; Article 62].

  • The draft regulations require both assignor and assignee to jointly go through trade mark assignment procedures at the China Trademark Office (CTMO). Previously responsibility rested only with the assignee [Article 33].

  • The revised Trademark Law will remove the right of appeal for unsuccessful opponents of a trade mark application. In the situation that an opposition is successful but then overturned on appeal at the Trademark Review & Adjudication Board (TRAB), a subsequent invalidation action against this mark is now permitted based on the same facts and grounds [Article 65].

  • The draft regulations specify that record of licence contracts with the CTMO should be made before the end of the contract – not within three months of signing as in the previous regulation [Article 74].

  • The draft regulations contain a number of provisions on enforcement:

    • A formula emphasising actual sales price is to be used as the primary method to calculate illegal revenue in enforcement cases. Semi-finished goods can be included in calculations [Article 82]

    • Under the revised Trademark Law “facilitation” of infringement is considered to constitute infringement of a registered trade mark. A list of actions constituting "facilitation" of trade mark infringement is provided in the draft regulations [Article 83].

    • Repeat infringement is defined as occurring when the same party is found to be infringing a trade mark within five years of a previous decision by an administrative agency or court [Article 86].

    • The circumstances where acquisition through legal channels is considered a defence to infringement are explained [Article 88].

    • Following detention of goods in administrative enforcement cases, manufacturers are obliged to prove that the goods are produced with permission of the rights owner. If proof is not provided the goods are assumed to be infringing without requiring rights owner verification [Article 91].

  • The draft prevents trade mark agents from making applications in their own name for marks not directly related to their business [Article 97].

Disclaimer

The purpose of the FCO Country Update(s) for Business (”the Report”) prepared by UK Trade & Investment (UKTI) is to provide information and related comment to help recipients form their own judgments about making business decisions as to whether to invest or operate in a particular country. The Report’s contents were believed (at the time that the Report was prepared) to be reliable, but no representations or warranties, express or implied, are made or given by UKTI or its parent Departments (the Foreign and Commonwealth Office (FCO) and the Department for Business, Innovation and Skills (BIS)) as to the accuracy of the Report, its completeness or its suitability for any purpose. In particular, none of the Report’s contents should be construed as advice or solicitation to purchase or sell securities, commodities or any other form of financial instrument. No liability is accepted by UKTI, the FCO or BIS for any loss or damage (whether consequential or otherwise) which may arise out of or in connection with the Report.

Countries: China
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