RECENT NEWS

Revision in Chinese trade mark law

On 30 August 2013 China’s Standing Committee of the National People’s Congress revised China’s trade mark law passing the “Decision on Revising the Trademark Law of the People’s Republic of China”.

The changes will significantly align prosecution procedures with international norms, and will improve trade mark owners’ ability to enforce their intellectual property rights against infringers.

Some of the key changes are outlined below.

General changes include:

  • a “good faith” requirement is introduced for trade mark applicants;
  • agents must now inform clients if a trade mark they intend to apply for cannot be registered; and
  • agents may not accept instructions if the agent knows the client is applying to register a trade mark in bad faith.

Procedural changes include:

  • the China Trade Mark Office will introduce an online filing procedure and will now allow multiclass applications;
  • the Office must issue its examination report within nine months of the filing date;
  • trade marks can now be renewed from 12 months prior to the expiration date;
  • accepted applications will now be published for a period of three months during which an interested party may oppose the registration of the mark; and
  • in an attempt to curb oppositions made in bad faith, only parties with prior rights will be able to lodge oppositions.

Enforcement changes include:

  • unauthorised use of “well-known” trade marks or taking advantage of “well known” branding in a manner that leads to consumer confusion or deception will become an offence;
  • there is an increase in statutory damages for trade mark infringement from RMB 500,000 to RMB 3 million;
  • the changes introduce a fair use standard and owners of trade mark registrations will not be permitted to stop the fair use of generic names and designs, the model numbers of goods, place names, and expressions of the quality, primary raw materials, functions, intended purposes, weight, quantity, or other characteristics of the goods; and
  • a party alleged to have infringed a trade mark registration will be able to defend an infringement action if the trade mark the subject of the registration has not been used in the past three years.

The changes will simplify China’s complex prosecution procedures, and address international concerns relating to bad faith applications and a lack of clear remedies for infringement.

The changes to China’s trade marks law will take effect from 01 May 2014.

Since the New Zealand-China Free Trade Agreement signed in 2008 China has become New Zealand’s fastest growing trading partner.

Please visit www.ellisterry.com for further information on all aspects of Intellectual Property, or email Emily Ellis at emily.ellis@ellisterry.com if you would like to discuss any issues relating to protecting or enforcing your brand in China.