Latest amendments to Trademark Law significantly increase maximum statutory damages


On June 26 2013 the proposed third amendments to the Trademark Law of the People’s Republic of China underwent a second reading during the third session of the 12th National People's Congress Standing Committee.

Although the draft of the amended Trademark Law that was the subject of deliberation at the National People's Congress was not made available to the public, details of the amendments were posted on the official website of the National People's Congress, and it would appear that the draft version of the amended Trademark Law that was previously released to the public has since been revised.

The main points of the latest amendments are as follows:

  • Bad-faith trademark registrations - the National People's Congress report suggests that the amendments will place the following responsibilities on trademark agencies:
    • They must inform their clients when a trademark application cannot be registered according to the law;
    • They are not allowed to act if they know, or should know, that a client is seeking to register a mark maliciously or is infringing the rights of others; and
    • They cannot file trademark applications for the purpose of trading in trademark rights.

      Additionally, the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB) may refuse cases from trademark agencies if they fail to meet the abovementioned legal obligations.
  • Increased statutory damages -  the current Trademark Law limits statutory damages to Rmb500,000, and the previously released draft amendments proposed doubling the maximum amount of statutory damages to Rmb1 million under the Trademark Law. According to the National People's Congress’ website, the revised amendments propose to increase the maximum amount of statutory damages to Rmb2 million.

  • Single colours are prohibited from registration - while the previously proposed amendments to the Trademark Law provided for the possibility of registering single colours as trademarks, the National People's Congress reports that this provision has been removed from the latest amendments. 

  • Prohibited advertising of 'well-known trademark' status -  the amendments will ban the use of the term 'well-known trademark' on labels and packaging, as well as in advertising, promotions and commercial activities.

  • Time limits before the CTMO and TRAB - under the amendments, the initial examination period for trademark applications shall be limited to nine months, and the examination of public oppositions will also be limited to nine months. Additionally, the period for reviewing refusal appeals shall be six months, while the time limit for reviewing opposition appeals will be nine months. The CTMO must request leave from the State Administration of Industry and Commerce (SAIC) if further time is needed to complete the aforementioned processes. 

According to an interview conducted on April 25 2013 with Mr Fu Shuangjian, former deputy director of the SAIC, the new Trademark Law is likely to take effect later this year.

George Chan and Paul Kossof, Rouse, Beijing

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