The Trademark Law of the People's Republic of China was
first adopted in 1982, and amended twice, in 1993 and 2001, to
meet domestic and international requirements. The Trademark Law
has played a significant role in protecting trade mark rights,
maintaining fair market competition, and promoting the
development of China's economy and society. However, it is
increasingly unable to meet the practical needs of the country.
The complicated registration procedures, the increasing number
of bad faith registrations, the serious unfair competition, the
rampant trade mark infringement and the weak protection on
trade mark rights are often criticised by trade mark owners. In
order to implement a national IP strategy, making full use of
the trade mark system, and better serve the economy and
society, the third amendment of the Trademark Law is quite
Progress of the third amendment
The third amendment was launched in 2003 by the State
Administration for Industry and Commerce (SAIC). After numerous
investigations, solicitation of opinions and repeated
revisions, the SAIC submitted the draft amendment to the Legal
Affairs Office under the State Council (SCLAO) for review in
After further amendments, in September 2011, the SCLAO
published the Draft Amendment for public comments. In October
2012, the SCLAO submitted the Draft to the National People's
Congress (NPC) for review.
In December 2012, the NPC issued the Draft Amendment for
public comments. It is expected that the Trademark Law after
the third amendment will be enacted in 2013.
Contents of the third amendment
There have been several versions of the Draft Amendment,
made by the SAIC, the SCLAO and the NPC respectively. Here we
talk about the amendments mainly based on the version of the
NPC (the Draft).
Further conveniences for trade mark registration
Sound is permitted to be registered as a trade mark. A
single colour is also registrable if it obtains distinctiveness
Multi-class applications are allowable, which is obviously
convenient for applicants who often have a large number of
The examiner's report is introduced to allow the applicant
to amend the application documents or provide necessary
explanations for the application. This is very helpful to
prevent direct rejection of the application and thereby quicken
the registration procedure.
The deadline for filing appeals of rejection is extended
from 15 days to 30 days. The deadline for filing lawsuits
against the administrative decision of punishment is extended
from 15 days to two months. These extensions would be warmly
welcomed by overseas applicants, as they would have more time
to consider and to prepare the subsequent procedures.
E-filing for trade mark applications is allowable. E-filings
are already received by the Trademark Office (the CTMO). The
Draft confirms this in law and it is expected to push further
improvements in E-filing procedures.
Maintenance of fair market competition
The Draft regulates "the well-known trade mark should be
recognised, upon the request of the involving party, as a fact
that is necessarily to be recognised to deal with the specific
trade mark dispute". This amendment confirms the principle of
passive protection for case-specific recognition, that has
already been used by the Chinese administrative authorities and
courts in handling trade mark disputes involving well-known
trade marks. It is expected that through this amendment, the
owner of the well-known trade mark could be prohibited from
advertising the mark improperly and the unfair competition in
this respect would be reduced.
To further fight against bad faith registration, the Draft
prohibits the registration of a mark that is already used by
others on similar goods or services if the applicant clearly
knows the existence of the mark through contract, business or
Under the current laws, if the owner of priority rights
wants to accuse the pre-emptive registration of others, he
shall provide evidence to prove simultaneously that "the mark
is already used by him in mainland China" and "the mark has
obtained certain influence through his use". In practice this
is usually difficult for the owners, especially for those who
only have advertising and sales but no products in China, as
the standards for "certain influence" in China are very
difficult to meet. According to the Draft, if the owner of the
prior right has evidence that the later applicant clearly knew
the mark through relationship of contracts, business or other,
it is not necessary for him to prove the "certain influence" of
his mark, which is helpful in reducing the burden of proof on
the legitimate owners.
In practice, there are many other bad faith pre-emptive
registrations, which could not be addressed by the Draft
Amendment this time.
If the owner of priority rights has already used his mark in
China and achieved a certain influence for this mark, the later
applicant should know this mark, even if the two parties had no
contracts, business dealings or other relationships as
described in the Draft. Under current practice, the
administrative authorities and the courts could directly
presume the registration by the later applicant is "a
preemption by unfair means" referred to in article 31 of the
Trademark Law, so the owner of the priority rights does not
necessarily have to adduce evidences of the "unfair means" or
"bad faith" of the infringer. Regretfully, the Draft does not
If a mark is highly distinctive and has obtained certain
influence in China, whether another party's registration of
dissimilar goods or services will create confusion is of great
concern to trade mark owners. Under current law, the
cross-class protection is only given to well-known trade marks,
but it is widely known that the recognition of well-known trade
marks in China is rather strict and expensive. Many marks are
very distinctive and enjoy a high degree of fame in China, but
they are not as well known as required, or the evidence is
insufficient to prove it. For these marks, many cases show that
confusion might also be caused even they are used on dissimilar
goods or services. To protect such trade marks, the earlier
Drafts made by the SAIC and the SCLAO have clauses to prohibit
the preemptive registration on dissimilar goods or services.
But the Draft by the NPC deleted these clauses, and it is hoped
that they will be reconsidered in due course.
There are also some marks that have not been used in China,
or the use of them is not widespread enough, but their fame and
influence has reached China through advertising or other
activities. Preemptive filing of these marks is also a serious
problem in practice. The Draft failed to mention this
There is still good news for actions against bad faith
registration. The Draft introduces a new clause: the
application for registration, and use, of a trade mark shall
comply with the principle of good faith. Although the
definition of good faith is not specifically given in the
Draft, and could not be used solely as the base to oppose or
invalidate bad faith registration, it is a general principle
and may to be used together with other provisions to deter any
registration which is obviously in bad faith but could not been
addressed in current laws.
The Draft prohibits the use of others' trade marks as a
trade name. Under current law, such use would constitute a
violation of China's Anti-Unfair Competition Law. In order to
provide a connection in the Trademark Law, the Draft regulates
that where the use of another's well-known trade mark or
registered trade mark causes confusion among consumers and
constitutes unfair competition, the use should be regulated
according to provisions in the Anti-Unfair Competition Law.
The Draft allows the legitimate use of the earlier mark
after its preemption. According to the provision, if, before
the application of the mark, another party has already used the
mark on similar goods or services, the later registrant is not
entitled to prohibit the use of the earlier owner within the
original scope, but is entitled to ask additional elements to
differ from each other.
According to the current law, if the owner of the priority
right could not cancel or invalidate the preemptive filing, he
might be accused of trade mark infringement by the later
registrant or blackmailed for trade mark transfer. The new
provision allows the earlier owner to continue the use within
the original scope, which will ensure the normal operation of
the owner and reduce their damages and risks. On the other
hand, such an amendment will help the owner from being robbed
by infringers for high transfer fees or licensing fees.
Simplified opposition procedure
Under the current law, any person may file an opposition
against a published trade mark for any reason, which causes a
large number of bad faith oppositions. Meanwhile, a four-level
examination for Chinese oppositions, namely the CTMO's ruling,
the Trademark Review and Adjudication Board's (TRAB) review,
and two instances of court trial, makes the opposition
procedure extremely complicated and time consuming.
To address the problem, the Draft limits the opponent to
owners of prior rights and interested parties, and limits the
opposition reasons to possible damage to priority rights. On
the other hand, the Draft regulates that, after examining the
opposition, the CTMO could make a decision of approving or
rejecting the registration of the mark. For approving the
registration, the opponent cannot file an appeal with the TRAB,
but should file an invalidation request with the TRAB after the
registration if he is dissatisfied with the decision. For
rejecting the registration, the opposed party could file an
appeal with the TRAB, and later file a lawsuit if he is
dissatisfied with its decision.
Compared with the earlier versions of the amendment, the
Draft by the NPC is retrogressive in optimising opposition
procedure. Different procedures to remedy decisions of the CTMO
violate the principle of legal supervision over all
administrative proceedings, and it would also create inequities
of procedural rights to the two sides.
The earlier Draft by the SAIC proposed the oppositions to be
field directly with the TRAB. If the involving party is not
satisfied with the decision of the TRAB, he is entitled to file
a lawsuit with the court. This proposal will cancel one level
of administrative examination and largely improve the
efficiency for trade mark right confirmation, so it is
generally agreed by the theory circle and judicial circle.
Besides optimising the opposition procedure and reducing the
cost to the trade mark owners, the elimination of opposition in
the CTMO provides an infinitely more workable procedure.
Severe punishment for trade mark infringement
The act of "intentionally providing and facilitating
conditions for infringement and assisting another to infringe"
should constitute trade mark infringement that should be liable
Punitive damages could be awarded if the infringing act is
serious, up to three times the claimed loss, the illegal profit
or the royalty. The maximum statutory damages are increased
from Rmb500,000 ($80,167) to Rmb1 million.
A party infringing another's trade mark right twice within
five years would be given severer penalties.
If necessary, the courts could order the infringer to
provide the accounts and materials, which would lighten the
burden of proof on the infringed party.
Gaps and uncertainty
The Draft Amendment to the Trademark Law introduces many
changes intended to further aid applicants, attack bad faith
registrations, and boost the protection of trade mark rights,
but these changes are not as significant as expected, nor as in
earlier versions. On the issues of opposition procedure,
protection of unregistered trade marks, and marks of OEM
products, the Draft still leaves gaps and uncertainty.
Hopefully, the final amended Law and the following amended
Implementing Regulations may address these questions
Jinchen Song is the co-founder of DEQI Intellectual
Property Law Cooperation. He obtained his BS in applied
physics from Beijing Technology University and his LLB
in IP law from the Law School of Beijing University. He
began his IP practice in 1998 and joined DEQI as a
partner in 2001.
Jinchen practices Chinese IP law in patent
prosecution, counselling and litigation, specialising
in patent procurement, patent reexamination, appeal and
invalidation proceedings, and in counselling on patent
validity, patentability and infringement issues. He is
also experienced in patent management and IPR
Jinchen is an active participating member of the All
China Patent Attorney's Association. He is also one of
the contributing authors to the China supplement of
Software Patents Worldwide.
Jiayan Xie is a trade mark attorney at DEQI
Intellectual Property Law Corporation. She obtained her
LLB degree in international relations from Renmin
University of China and received IP training in the
United States in 2006.
Jiayan has practiced Intellectual Property law for
10 years. She mainly focuses on trade mark prosecution,
counselling, enforcement and other matters relating to
trade mark protection. She has extensive experience in
trade mark clearance search, registration, opposition
and appeal, and represents international and
multi-national corporations in prosecution,
cancellation and litigation proceedings. Her expertise
also extends to the protection of copyright and domain