New Trademark Law enhances trademark protection in China

Claud Mccoid

It has been more than two decades given that the promulgation and implementation of China’s new Trademark Legislation in 2019. Throughout this interval, how have the adjustments in the new Trademark Regulation been applied? What result has been obtained? What polices or interpretations have been issued by the China National Intellectual Residence Administration (CNIPA) and courts, and what actions have been taken to market and make certain the smooth implementation of the new Trademark Law?

These thoughts will be dealt with in reference to every of the major modifications released by the new Trademark Regulation.

Destructive trademark apps

Post 4 of the new Trademark Law offers that “malicious trademark programs not intended for use shall be rejected”. This has led to even further crackdowns on malicious trademark filings.

In buy to apply the revision of the Trademark Regulation and standardise trademark application and registration, the Point out Administration for Marketplace Regulation (SAMR) issued Numerous Provisions on Regulating the Behaviour of Trademark Application and Registration (Purchase No. 17) in Oct 2019. These offer distinct aspects to decide whether or not a trademark application must be outlined as a “bad religion application not intended for use”.

In 2020, the China Trademark Business office voluntarily turned down 15,600 terrible religion apps not supposed for use in the course of the trademark assessment method.

At the beginning of 2021, CNIPA issued the Unique Action Ideas for Combating Malicious Trademark Squatting, and cracked down on 10 common forms of negative religion trademark programs. These involved copies of the names of public figures, perfectly-identified performs and movie star names with a high standing.

In a press conference on January 12 2022, CNIPA explained that 482,000 malicious trademark registration apps have been dealt with in 2021, and 1,111 squatting trademarks these kinds of as Changjin Lake (a well known film title) and Quan Hongchan (the gold medal winner in the women’s single 10-metre platform diving at the 2020 Tokyo Olympics) had been quickly turned down.

A total of 1,635 registered trademarks have been declared invalid ex officio, and 1,062 suspected malicious trademark registration conditions or scenarios with intense adverse outcomes have been forwarded to the regional governing administration.

In accordance to a notice launched on February 14 2022, CNIPA refused in entire 429 malicious trademark programs for Bing Dwen Dwen (the identify of a single of the mascots for the 2022 Beijing Wintertime Olympics) and Gu Ailing (The gold medal winner of the women’s freestyle skiing in the 2022 Beijing Winter Olympics) among the many others. In addition, 43 trademark registrations like Bing Dwen Dwen and Gu Ailing were being declared invalid ex officio by CNIPA.

To adapt to the revision and improvement of the Trademark Legislation and resolutely crack down on lousy faith trademark apps not supposed for use, CNIPA has summarised the sensible experience in the past two years since the promulgation and implementation of the new Trademark Legislation and revealed the Rules for Trademark Assessment and Overview (guidelines).

The guidelines clarify the examination and assessment expectations for “bad faith trademark purposes not supposed for use” and supply unified and consistent benchmarks in determining “bad religion trademark purposes not intended for use” in trademark examination, opposition, invalidation and assessment processes.

The tips determine the expression “without intent to use or not supposed for use” as referring to cases where by the applicant has no genuine intention to use, or activity for preparing of use, or exactly where there is no likelihood that the applicant could use the mark dependent on realistic inference. The suggestions exclusively exclude the pursuing two scenarios in the application of Short article 4:

  • The applicant documents marks that are equivalent with or related to its major mark in distinctive lessons for a defensive purpose
  • The applicant files a average variety of marks for its long run enterprise.

The rules list the subsequent 10 circumstances where trademark apps are regarded as negative religion filings with out intent to use, and Article 4 of the Trademark Regulation should be applied: The selection of trademarks is massive and evidently exceeds the business scope of the applicant, the marks are submitted with out intent to use and disturb the purchase of the administration trademark applications

i) The applicant copies, imitates or plagiarises other parties’ prior marks with superior standing or potent distinctiveness, and disturbs the order of the administration trademark programs

ii) The applicant regularly copies, imitates or plagiarises 1 entity’s prior marks with a high popularity or robust distinctiveness, and disturbs the order of the administration trademark purposes

iii) The applicant documents a large selection of trademarks that are very similar to other parties’ trade names, abbreviations of trade names, area names, packaging, logos, commercials, structure works or logos

iv) The applicant files a big number of trademarks that are very similar to names of well-known folks, trade names of popular businesses or other parties’ adverts, art functions, style and design operates or logos that have received a large popularity

v) The applicant documents a big selection of trademarks that are comparable to popular geographical names, tourist sights, well known landscapes or names of structures

vi) The applicant documents a significant number of logos that are identical to generic conditions or industry glossaries or files a substantial range of marks that specifically refer to top quality, raw material, function, bodyweight, amount or any other characteristics of the selected items/services

vii) The applicant information a substantial quantity of emblems and transfers a significant amount of marks to unique get-togethers

viii) The applicant sells a significant range of emblems to other get-togethers, forces other functions to collaborate or there is any other behaviour to get inappropriate positive aspects and

(ix) Any other cases that can be acknowledged as undesirable faith filings.

Post 4 of the China Trademark Regulation can be utilized not only ex officio by CNIPA to trademark applications but also in trademark opposition/invalidation techniques.

Usually speaking, the cases in iii) and ix) over are applied in opposition/invalidation techniques, and the other situations can be used in the two trademark evaluation and opposition/invalidation process.

Regulation of trademark agencies

Paragraph 3 of Report 19 of the new Trademark Regulation supplies that “if a trademark agency is aware of or need to know that the trademark applied for by the client falls below the conditions specified in Articles 4, 15 and 32 of this Law, it shall not settle for to stand for the application”.

This even further curbs malicious trademark apps not meant for use, by regulating the behaviour of trademark companies.

In 2019, CNIPA launched the so-referred to as Blue Sky Action for IP businesses to rectify the disorder in the sector this sort of as unqualified organizations. In 2021, CNIPA further more promoted Blue Sky Motion to deal with unlawful company behaviour.

CNIPA has swiftly cracked down on destructive trademark agency conduct, and has been given and investigated a lot more than 130 instances of symbolizing destructive trademark squatting.

On August 12 2021, CNIPA issued the Actions for the Collaborative Governance of Unlawful Behaviours in the Patent and Trademark Company Sector to battle violations of legal guidelines and regulations.

The Measures aim to make a cleanse and upright natural environment for the agency sector. In accordance to the Steps, patent and trademark businesses and brokers with a single of the next instances will be blacklisted, and their information released inside a specific interval of time, issue to social supervision and collaborative restraint measures:

i) The patent and trademark agency illegally personnel staff who have resigned or retired from CNIPA, in accordance to the provisions of CNIPA on regulating staff who have resigned from public office environment and retired to operate in patent or trademark businesses, and there are instances such as hold off or refusal to suitable their violations of laws and laws.

ii) The patent and trademark company and agent collude with examiners and get hold of inappropriate advantages by indicates of bribery or other procedures that very seriously have an effect on the fairness and impartiality of patent and trademark assessment work

iii) The patent and trademark agency and agent have brought on critical penalties or have other really serious harmful consequences by suggests of illegally transmitting the products involved in the circumstance, intervening in the examination result or improperly getting assessment information and facts and

iv) Other situations that need to be included in the blacklist.

Punitive damages

Posting 63 of the Trademark Law increased punitive damages from a few moments to 5 periods. It stipulates:

The total of compensation for infringement of the distinctive trademark proper shall be established in accordance to the genuine loss endured by the suitable holder due to the infringement if the true loss is complicated to decide, it may well be decided according to the profit received by the infringer due to the infringement if the decline of the proper holder or the benefit obtained by the infringer is complicated to figure out, it can be reasonably determined with reference to the many of the trademark licence fee. For destructive infringement of the trademark distinctive suitable, if the situation are major, the quantity of payment may well be determined at far more than just one time but not more than 5 instances the volume established in accordance with the over technique. The amount of compensation shall include fair fees paid by the correct holder to quit the infringement.

For malicious infringement of the trademark special right, the legislation thus offers extra effective sanctions, boosts punitive damages from 3 periods to 5 situations, thus giving more ability for rights holders to defend their trademark legal rights.

China’s laws regarding IP have systematic provisions on the material of punitive damages. Write-up 1185 of the Civil Code, which arrived into result on January 1 2021, stipulates that “if the intellectual house legal rights of many others are intentionally infringed, and the situation are major, the infringed particular person has the appropriate to ask for corresponding punitive damages”. The revised Patent Legislation and revised Copyright Regulation, which arrived into effect on June 1 2021, have virtually the exact provisions as the revised Trademark Law.

On March 2 2021, the Supreme People’s Courtroom issued the Interpretation on the Software of Punitive Damages in the Trial of Civil Cases relating to Infringement of Intellectual House Legal rights (Fa Shi [2021] No. 4). It additional clarifies the relevant situations for punitive damages, provides guidance to establish ‘deliberate’ and ‘serious circumstances’ and sets the base and several for payment.

Shortly just after the Interpretation was promulgated, on March 15, the Supreme People’s Court docket declared six typical civil instances about infringement of IP rights that entail punitive damages, including five trademark infringement situations. These supply immediate direction for the software of the Interpretation in long term scenarios, to information courts at all ranges to utilize punitive damages appropriately.

Clearer authorized foundation

The newest amendment to the Trademark Regulation provides a clearer and extra immediate legal basis for cracking down on poor faith trademark registration. With the joint efforts of the trademark assessment office and the legislation enforcement department, terrible religion trademark programs not meant for use and the unlawful trademark company behaviour are properly curbed.

The Supreme People’s Court‘s Interpretation and typical scenarios promoted the advancement of the punitive damages process in the field of IP legal rights and the implementation of punitive damages in China’s judicial apply. These absolutely reflected China’s determination to strengthen the judicial defense of IP rights.

By means of China’s ongoing endeavours to crack down on bad faith trademark apps and trademark infringement, the get of trademark registration administration will be superior regulated, trademark rights will be much better shielded, and the honest sector competition atmosphere will be enhanced.


Xiaoping Wei

Attorney-at-regulation

CCPIT Patent & Trademark Law Workplace

Xiaoping Wei joined CCPIT in 2008. Her apply focuses on trademark prosecution, administrative security of trademark legal rights, trademark litigation and offering authorized views on trademark defense procedures.

Xiaoping received a Grasp of Law from the Law School of Renmin College of China and acquired coaching in US trademark law and exercise at Birch, Stewart, Kolasch & Birch LLP in Washington DC in 2014.

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