To "strengthen legal protection of intellectual property", further improve the trademark system, solve the outstanding problems in the field of trademark, and promote the high-quality development of the socialist market economy, CNIPA promoted the revision of the Trademark Law of the People's Republic of China, drafted the Revision Draft of the Trademark Law of the People's Republic of China (Draft for Comments) and issued a solicitation.
Since the implementation of the Trademark Law on March 1, 1983, it has been amended four times in 1993, 2001, 2013 and 2019. This amendment further straightens out the system and expands the Trademark Law to 101 articles in 10 chapters, including 23 new articles and 45 substantive amendments. The main contents of the amendments are as follows.
1. When applying for a trademark, the applicant needs to explain the actual use or intended use of the trademark.
Comment: It aims to crack down on malicious registration applications that are not intended for use. For trademarks that have not been used or are not intended to be used in the short term, registration applications shall be filed after discretion. For trademarks that have been used or are intended to be used, applicants shall pay attention to retaining the use evidence, letter of intent and business plan.
2. The trademark registrant shall submit justifiable reasons once every five years, after the approval and registration of the trademark, to explain the use or nonuse of the trademark on designated goods.
Comments: The amendment emphasizes more on the obligation of trademark use, eliminates idle trademarks, curbs the hoarding of trademarks, and cracks down on malicious registration applications not for the purpose of use. The strengthening of the use obligation makes the applicant pay attention to collecting the use evidence regularly to avoid the cancellation of the trademark due to not providing the evidence regularly. At the same time, the Office will control the number of trademark applications and demand filing trademark applications for the purpose of actual use.
3. The trademark applicant shall abide by the principles of good faith and prohibition of abuse of rights when applying for the trademark and safeguarding the trademark rights.
Comment: Article 9 adds that "trademark owners shall not abuse trademark rights to damage national interests, social and public interests or the legitimate rights and interests of others" to crack down on malicious litigation and prohibit the abuse of power. Applicants shall file applications of trademark registration based on the principle of good faith and shall protect their rights appropriately and reasonably.
4. The trademark applied for registration shall not be the same as the previous trademark that the applicant applied for, has registered, or has been cancelled, withdrawn, or declared invalid within one year before the filing date. Repeated applications are prohibited. The same owner is allowed to hold only one identical trademark on the same goods.
Comment: This provision can curb the repeated preemption of trademarks by malicious preemptors to a certain extent, but it will also have a certain impact on the trademark rights of enterprises with actual business needs.
5. Article 22 of the draft amendment clarifies the types of malicious trademark applications, including absolute reasons such as violating national interests, social and public interests and not taking use as the purpose, as well as relative reasons such as infringing on the prior rights of others and preemptive registration of agency relations.
Comment: The clarified types of malicious trademark application are more convenient for the follow-up trademark rights protection and law enforcement, and more beneficial for cracking down on malicious registration.
6. Within two months from the date of publication of a trademark that has been preliminarily approved for publication, the prior right owner and interested party may raise an opposition to it. The opposition period will be shortened to 2 months (based on this reasoning, the defense and supplement will also be shortened to 2 months).
Comment: The shortening of the opposition period will further shorten the time for obtaining the right, but the shortening of the time may make the applicant unable to prepare the opposition information in time, resulting in the failure to submit the opposition application on time. At the same time, the applicant should pay attention to the timely monitoring of trademark oppositions.
7. Where the intellectual property administrative department of the State Council makes a decision not to register a trademark when the opponent submits an opposition, and where the objector is not satisfied with it, he or she may file a lawsuit with the court. The cancellation of the non-registration review procedure has shortened the entire period by at least 12 months.
Comment: Cancelling the non-registration review procedure can save time, but it also makes one response chance less for the opposed party, and have to file a lawsuit directly. Therefore, it is suggested that the opposed party should submit the opposition defense and relevant evidence as much as possible after the trademark is opposed, so as to improve the chances of winning.
8. The successful applicant for invalidation may request to transfer the registered trademark to his/her own in cases where the original owner tries to imitate the well-known trademark, constitutes rush registration in entrustment, or register the trademark that has been used by others and has certain influence by improper means. There is no such provision in the opposition procedure.
Comment: This amendment can reduce the burden of the applicant for invalidation who can obtain the trademark right by requesting the trademark assignment without having to apply for the trademark all over again.
9. For malicious reproduction, imitation or translation of well-known trademarks of others; rush registration of other's trademark by an agent, representative or interested party; acts such as impairing the prior rights and interests of others or preempting the registration of trademarks that have been used by others and have certain influence by improper means, the “other” party may bring a lawsuit to the people's court and claim compensation for losses. In addition, the people's court shall impose punishment according to law on those who file trademark lawsuits maliciously.
Comment: This action can effectively regulate malicious preemption of others’ trademarks and malicious rights protection, and can also effectively reduce the cost of the right owners in fighting against malicious preemption. However, it is necessary to be cautious when filing trademark litigation on bad faith.
10. The requirements for trademark agencies will be stricter, and the entry threshold will be raised. A number of trademark agencies will be eliminated.
Comments: This action can maintain the order of the agency industry, protect the rights and interests of the applicant, improve the professional level of agencies and TM attorneys, purify the market environment, and to a certain extent, curb malicious acts.
