On August 30, 2013, the Permanent Committee of the Popular Assembly
National, China's highest legislature, has approved the third amendment
of the Trademark Law. The new Law will come into force on 1 May 2014.
Between
Important changes include the following:
Important changes include the following:
Fastest procedure: under the old law, there was no deadline
for the processing of a request, opposition, cancellation or dispute, which
It made the procedure too slow. The law has been modified establishing a period of between 9 and 12 months for each
procedure with the possibility of carrying out an extension of 6 or 12 months.
for the processing of a request, opposition, cancellation or dispute, which
It made the procedure too slow. The law has been modified establishing a period of between 9 and 12 months for each
procedure with the possibility of carrying out an extension of 6 or 12 months.
Sound marks and other non-traditional elements:
with the new Law it will be
possible to register a sound trademark as well as other non-traditional trademarks, if
although these have not been mentioned in the modification.
with the new Law it will be
possible to register a sound trademark as well as other non-traditional trademarks, if
although these have not been mentioned in the modification.
Applications for various classes: Until now, trademark applicants in
China had to submit an application for each class even if it was
the same brand. With the modification, China joins other countries, such as
Spain, which allow several classes to be included in a single application.
China had to submit an application for each class even if it was
the same brand. With the modification, China joins other countries, such as
Spain, which allow several classes to be included in a single application.
Electronic applications: electronic applications are now
possible but only on a limited scale. The modification of the Law recognizes
electronic applications as acceptable applications and will also allow the
electronic presentation of all types of documents related to a
request.
possible but only on a limited scale. The modification of the Law recognizes
electronic applications as acceptable applications and will also allow the
electronic presentation of all types of documents related to a
request.
“Well-known trademark” labels: since the entry into force of the new Law
of Brands, manufacturers and merchants will not be able to label their products
as well-known trademarks in any type of commercial activity. In case of
non-compliance, the manufacturer/trader could be sanctioned with a fine
of RMB 100.000 (about 12.500 euros).
of Brands, manufacturers and merchants will not be able to label their products
as well-known trademarks in any type of commercial activity. In case of
non-compliance, the manufacturer/trader could be sanctioned with a fine
of RMB 100.000 (about 12.500 euros).
New cause to challenge bad faith applications: according to the modifications
introduced, if a trademark applicant has had a contractual relationship,
commercial or other with the owner of an identical or similar prior trademark
and has been aware of the earlier mark, the applicant's marks are not
may register for products identical or similar to those for which
the previous brand had been used.
introduced, if a trademark applicant has had a contractual relationship,
commercial or other with the owner of an identical or similar prior trademark
and has been aware of the earlier mark, the applicant's marks are not
may register for products identical or similar to those for which
the previous brand had been used.
- Regarding the license: If damages for a wrongful infringement
faith are serious, judges can award compensation of up to 3 times the
license fee.
- Provide accounting books: with the new version of the law, judges are allowed, depending on the
particularities of each case, condemn the defendants to present their books
accounting and materials related to the infringement.
- Proof by the plaintiffs of the actual use of the
brand: if the plaintiff cannot prove that the mark in question had been subject
of real and effective use during the 3 years prior to the claim, and not
can prove their other losses suffered from the infringement, the defendants
They will be exempt from claims for damages.
- Compensations of up to 3 million RMB: under current law, in a lawsuit for
trademark infringement, when it is not possible to calculate the damages suffered by the
plaintiff and illicit benefits
obtained by the defendant,
Judges have the power to award damages of up to 500.000 yuan
(about 62.500 euros). The new Law expands this discretion six times to 3
million RMB (about 375.000 euros).
Administrative fines: According to the amended law, the fine
administrative will be up to 5 times the value of commercial activities
illegal businesses where the value of the illegal business is not less than 50.000 RMB (about
6.250 euros), or up to 250.000 RMB (about 31.250 euros), where the value of the
illegal business cannot be determined or is less than 50.000 RMB (about 6.250
euro).
administrative will be up to 5 times the value of commercial activities
illegal businesses where the value of the illegal business is not less than 50.000 RMB (about
6.250 euros), or up to 250.000 RMB (about 31.250 euros), where the value of the
illegal business cannot be determined or is less than 50.000 RMB (about 6.250
euro).
