In this article I will review China's new Trade Mark Law.
Coming into effect in 2015, it represents the third amendment
of the Trade Mark Law since its inception in 1982.
Multi-class trade mark applications
One of the biggest innovations of this law was that it
allowed trade marks to be filed under more than one class.
However, we have not seen the abandonment of the traditional
single class application system in favour of the multi-class
system or even a significant shift to the latter. From what
I've seen, multi-class applications are less than 10% of the
Why? One reason is that filing a multi-class application is
no cheaper than filing multiple single-class applications. The
official fee charged by the Chinese Trade Mark Office (CTMO) is
calculated by class and there is no discount if the filings
under different classes come under one application, unlike in
most countries. In addition the attorney fee is charged by
class and there isn't much of a discount if the filings under
different classes come under one application.
Finally, multi-class applications have limitations that
single class applications do not. For example, it is not
possible to transfer only one class of a multi-class mark.
The CTMO and the Trademark Review and Adjudication Board
(TRAB) have issued decisions applying all the articles
discussed above, but the decisions are still tentative and the
Divisional application in case of partial refusal
A good provision of the New Trade Mark law was that it
allowed divisional applications for trade mark applications
that are partially rejected, for example, only in relation to
certain goods and services in one class. The trade mark
applicant can now file a divisional application to which a new
number is assigned and file the appeal in relation to the
refused part of his trademark, while the rest of the trademark
is published for opposition.
One of the key reforms that the new Trade Mark Law was
expected to adopt was to put in place a system to curb the
numerous cases of bad faith applications. Early commenters were
unimpressed, however, by the new formulation of Article 15
(which was the most relevant article to bad faith), and we were
one of them.
Nevertheless, we notice – at the distance of 3
years – that the new Trade Mark Law has put in place a
complex and comprehensive system to combat squatting
In the practice we have seen in several decisions that the
CTMO and TRAB are using different legal grounds to reject such
bad faith application. Here are all the articles that have been
used against trade marks filed in bad faith:
Article 7: the principle of good faith when in applying and
using a trade mark.
Article 9: the trade mark for which an application for
registration is filed shall have distinctive characteristics
easy to identify, and may not conflict with the legal rights
acquired by others in priority.
Article 10.1(7): the following words or devices shall not be
used as trade marks: (7) those which mislead the public about
the quality or the place of origin.
Article 10.1(8): the following words or devices shall not be
used as trade marks: (8) those detrimental to socialist morals
or customs, or having other unhealthy influences.
Article 13.1: protection within the same class for
unregistered well-known trade marks;
Article 13.2: cross-class protection for registered
well-known trade marks;
Article 15.1: trade marks filed by agents or representatives
of the owner abroad shall not be registered;
Article 15.2: any identical or similar trade mark shall not
be registered if the trade mark applicant is fully aware of the
existence of the trade mark owned by the other party through
Article 32: a trade mark which is used by another person and
enjoys a certain reputation shall not be registered;
Article 32: a trade mark which infringes the prior rights of
other persons shall not be registered.
Article 44.1: a trade mark applied by fraudulent means shall
not be registered.
Among all the provisions listed above, the most surprising
one is probably Article 44. To explain how this article has
been used in practice by the CTMO and TRAB we use the words of
the recent Standards for Trademark Examination and Trial issued
in December 2016 by the State Administration for Industry and
Commerce of the People's Republic of China:
The following circumstances belong to "obtaining
registration by other improper means" stipulated in this
Article: (1) A disputed trademark applicant applies for
registration of multiple trademarks, which are identical or
similar to another's trademark with relatively strong
distinctiveness; (2) A disputed trademark applicant applies for
the registration of multiple trademarks, which are identical or
similar to another's trade name, enterprise name, social
organization and other institution name, specific name, packing
and decoration of famous goods, etc.; (3) A disputed trademark
applicant applies for the registration of plenty of trademarks,
and obviously has no true intention to use them; (4) Other
circumstances which may be determined as obtaining registration
through improper means.
Surprisingly, what looked like a weak reform actually
resulted in an amazing piece of legislation on trademark
Oppositions to trade mark registration
In the field of the opposition there are two important
points to note: (1) rejection at the formality examination
phase where the opposition is based on unregistered trade
marks; and (2) the lack of an opportunity for the opposing
party to appeal against the opposition.
In relation to the first point, we are often unhappy about
this provision: the CTMO does not even examine the substance of
the case and rejects the opposition on the ground that it is
grounded on an unregistered prior trade mark.
As far as the lack of an appeal for the opponent, we have
developed the tactic of filing invalidation actions instead.
The fact that it is possible to file invalidation gives you a
choice between these two options. A non-qualified opponent can
file an invalidation once the trade mark is already granted for
protection, valid and enforceable.
Amount of damages
The new Trademark Law increased the amount of statutory
damages to Rmb3 million.
In Moncler v Nuoyakate (2014) the Beijing IP Court
awarded Rmb3 million in damages to Moncler. In Meri Chao
Group v Beijing Xiu Xin Jie Emerging Building Materials Court
(2016), the Beijing IP Court awarded the plaintiff Rmb10
million in damages.
Well-known trade marks
The new Trade Mark Law introduced amendments regarding
well-known marks that surprised foreign readers and
practitioners. In particular, it said that well-known trade
mark status cannot be claimed and used in promotion activity.
The provision aimed to stop companies from declaring that their
trade mark was well-known as a means of guaranteeing and
certifying the quality of their goods.
The implementation has been successful since cases of
declaration of the well-known trade marks in promotion
activities have dramatically decreased, if not totally stopped.
However a downside of this change is that the CTMO and TRAB
have stopped publishing the list of trade marks that are
recognised as well-known in the past six months.
Time limits for procedures
The new Trade Mark Law has fixed terms for the CTMO and TRAB
to complete certain procedures (for example: 9 months for
trademark examination and appeal against refusal and non-use
cancellation; 12 months for opposition, opposition review and
invalidation). These time limits have been respected. Moreover,
the cases in which the CTMO and TRAB have applied to the State
Administration for Industry and Commerce to extend the term by
an additional 3 or 6 months have been really rare.
However, the pressure caused by these fixed terms have had a
negative impact on other procedures. Though the CTMO and TRAB
hired more examiners, they were still forced to move staff from
one office to another in order to process these applications
within the stipulated timeframe. Many have noticed that several
procedures (which have no fixed timeframe) have suffered a
tremendous slowdown, for example, the issuance of notices of
receipt for trade mark filings, the issuance of trade mark
certificates for both national and international trademarks,
the approval and recording of trademark transfers, the
recording of change of agent or name or address.
||Fabio Giacopello is a
managing director at HFG. He was the winner of the 2013
Client Choice Award by the International Law Office, and
was named a notable practitioner (trademarks and patents)
by Chambers and Partners, Lawyer of the Year in the China
IP category by Global 100, an expert in trademarks in
2014 by Asia IP Expert, and a recommended lawyer by
Legal500. He is a member of the Anti-Counterfeiting
Committee at the International Trademark Association and
Arbitrator at the Shanghai International Arbitration