Long-awaited Trademark Law Implementing Regulations come into force

The PRC Trademark Law was last amended in October 2001. One year later, long-awaited Trademark Law Implementing Regulations have come into force, bringing the Trademark Law into line with World Trade Organization requirements under the Agreement on Trade-Related Aspects of Intellectual Property Rights.

The most significant provisions of the new implementing regulations are as follows:

• In the course of opposition or cancellation proceedings before the Trademark Office, or at the review stage before the Trademark Review and Adjudication Board (TRAB), a party may file a request for a declaration that its trademark is well known, thereby providing grounds for the rejection of the other party's application or the cancellation of the other party's registration for that mark.
  
  
• Applications may now be filed for geographical indications as certification or collective trademarks.
  
  
• All trademark application matters and proceedings shall be conducted in the Chinese language.
  
  
• Where an officer of the Trademark Office or TRAB is an 'interested party' (as defined), the applicant or other interested party may request that the officer be withdrawn from the adjudication of the case.
  
  
• Applications may now be filed for three-dimensional marks and combinations of colours. The application should be accompanied by reproductions of the mark which clearly demonstrate the three-dimensional shape or colours sought to be protected.
  
  
• In the situation where two or more applicants apply for identical or confusingly similar trademarks in respect of the same or similar goods/services on the same day, the Trademark Office will require each of the applicants to submit proof of first use. The first user will prevail over the other applicant(s). Where the applicants commence use of the mark on the same day, or where no one has commenced use, the parties are required to resolve the issue through consultation.
  
  
• TRAB is the administrative body that adjudicates and conducts reviews of the Trademark Office's decisions to refuse trademark applications, oppositions and cancellations. Decisions of TRAB are now appealable by way of legal proceedings instituted before a people's court.
  
  
• Under the Trademark Law, where goods sold under a registered mark are replaced by goods of an inferior quality, such that consumers are deceived, the administrative authorities are empowered to order that the situation be rectified or that the trademark registration is cancelled. Also, under the implementing regulations, they are allowed to impose a fine of up to 20% of the illegal business turnover, or not more than twice the illegal profits derived from such contravention.
  
  
• The implementing regulations clarify the acts of infringement provided for by the Trademark Law. The penalty for trademark infringement shall be a fine not exceeding three times the amount of the illegal business turnover resulting from the infringement. Where it is not possible to calculate the amount of illegal business turnover, the maximum fine that may be imposed is Rmb100,000.

Ai-Leen Lim, Colin Ng & Partners, Hong Kong