China’s New Trademark Law

Francisco A. Laguna & Jimmy Wang

Shanghai’s Nanjing Road Photo Credit:  Nevilley via Wikipedia Commons

Shanghai’s Nanjing Road
Photo Credit: Nevilley via Wikipedia Commons

This week, we begin a two-part series on China’s new Trademark Law, passed on August 30, 2013. It took more than a decade for the Legislative Branch (National People’s Congress) to revise the old law and ratify the new one. The new Trademark Law will take effect on May 1, 2014.  Below are some of the fundamentals of the law.

 

1.              The principle of good faith

The Law introduces the principle of good faith in trademark applications. Trademarks cannot be registered or used if they fail to meet the principle of honesty and credibility. For example, if someone submits an application to register a mark that is similar to another trademark for similar goods, and the applicant is aware of the existence of such competing mark because of contractual, business interaction or other relations, the application shall not be granted.

Kowloon Nathan Road Photo Credit: Eckhard Pecher via Wikipedia Commons

Kowloon Nathan Road
Photo Credit: Eckhard Pecher via Wikipedia Commons

The Law also extends the application of the good faith principle to trademark agents. Trademark agents shall refrain from acting if they know their clients are applying to register marks in bad faith or are infringing others’ rights. Agents will be civilly liable and be penalized by the trademark agent industry organization if they violate the principle of honesty and credibility, or if they impair the lawful rights and interests of their clients.

2.              Sound marks and well-known trademarks

The Trademark Law now permits the registration of “sound” marks.  Under the prior law, marks were limited to visually perceptible signs, including words, devices, letters, numerals, three-dimensional signs, and combinations of colors, but not including single colors, scents and moving images. The new Law allows sound marks to be eligible for trademarks registration.

Beijing Photo Credit: Fanghong via Wikipedia Commons

Beijing
Photo Credit: Fanghong via Wikipedia Commons

The new Law also clarifies the recognition and protection afforded well-known trademarks. Applications to register well-known trademarks can only be granted by the China Trademark Office, the Trademark Review and Adjudication Board and the People’s Court in cases involving goods or services.  Whether a mark is, indeed, well-known trademark will be determined on a case-by-case basis. Well-known marks are not protected in the case of products, packaging or containers or when used in exhibitions, promotions or advertising.

Next week, we will review the grounds provided in the Law for opposing a mark and the calculation of damages.

TransLegal has assisted clients register trademarks in China, the Dominican Republic, the European Union, Spain, the United States and Vietnam.  Please call us with your questions concerning the recently enacted Chinese Trademark Law.

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