Revised draft of amendments to Trademark Law issued

On June 20 2009 the State Administration for Industry and Commerce (SAIC) issued a revised draft of the proposed amendments to China's Trademark Law

Selected agencies and entities that will be affected by the amendments, including trademark owners, were invited to comment on the new draft.
The revised draft includes the following key features (as compared with the last draft, which was circulated for comment in 2007 - for further details please see "Major amendments to Trademark Law proposed"):
  • The broadened definition of a 'trademark' has been maintained: it includes colour marks and non-visual marks, such as sound, olfactory and motion marks (Article 8). However, the new draft provision on registrable trademarks provides that the examination and registration procedures for non-traditional trademarks will be set forth in regulations to be promulgated by the SAIC separately (Article 78).
  • The proposal to allow applicants to file multi-class trademark applications has also been maintained (Article 20).
  • In contrast to the former draft, the new draft no longer requires that the Chinese Trademark Office complete the examination of trademark applications within 12 months of the filing date.
  • Under the new draft, the office must examine trademark applications based on relative grounds (Article 9). In contrast, the former draft proposed to remove this requirement, which would have placed a significant burden on trademark owners.
  • As under the former draft, the new draft restricts the right to bring opposition and invalidation proceedings to the owners of earlier registered trademarks or geographical indications. This measure aims to reduce the number of vexatious or frivolous opposition or invalidation proceedings.
  • Consistent with the former draft, the new draft proposes to increase the maximum amount of statutory damages for infringement from Rmb500,000 to Rmb1 million (Article 68). 
Certain members of the trademark community have already submitted their comments on the proposed amendments to the SAIC. The trademark community now awaits the finalization of the amendments, which will have a significant impact on trademark protection and enforcement strategies.
Ai-Leen Lim, Bird & Bird IP (Beijing) Co Ltd, and Sofia Chen, Bird & Bird, Beijing and Hong Kong

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