HU GangRecently, China National Intellectual Property Administration (CNIPA) issued a notice on public solicitation of comments on the Revised Draft of the Trademark Law (Draft for Comments). China’s trademark law is facing the fifth revision since its promulgation in 1983. In this solicitation draft, the Trademark Law has been expanded from 73 to 101 articles, including 23 new articles, 6 formal amendments to existing articles, 45 substantive amendments to existing articles, and only 27 basically maintaining existing articles. In other words, in terms of the number of articles, the proportion of changes is so large that it has become the most significant revised draft of China’s trademark law in history.

First of all, the most eye-catching thing in the revised draft is to strengthen the strong regulation of malicious preemption of trademarks. It clarifies the specific situation of malicious preemption application for trademark registration, and makes it clear that the malicious registration can be punished through various ways of trademark administrative procedure, civil procedure and criminal procedure. For example, if the malicious preemption and damage the civil rights of a specific subject, the subject may request the infringer to bear civil liability for compensation; If it harms the national interests, social public interests or causes other serious unhealthy or negative influences, the state procuratorial organ may file a public interest lawsuit.

As we all know, trademark preemption is an inevitable and unpleasant by-product of the principle of “first-to-file, first-to-register”. In this revised draft, a lot of mature legislation and practices from the United States and the European Union on trademark use requirements have been used for reference, with a view to restraining trademark applications that are not intended for use. For example, the following requirements are clearly put forward: when submitting a trademark application, it is necessary to explain the use or intended use of the trademark. Every five years after the registration of a trademark, a description of the use of the trademark shall be submitted. In order to promote the true use of registered trademarks, repeated applications are prohibited in principle. The same owner is only allowed to hold one identical trademark on the same goods. Under certain circumstances, the successful applicant for invalidation may request the compulsory transfer of the ownership of the applied trademark to his own name.

Secondly, the revised draft expands the constituent elements of trademarks to a certain extent. It is now clear that the constituent elements of the applied trademark include “other elements” in addition to “words, graphics, letters, numbers, three-dimensional signs, color combinations and sounds”. This also means that the location trademarks such as “red bottom shoes Christian Louboutin “, and even non-traditional trademarks such as special odor trademarks, which have been confirmed in judicial practice, have the possibility of being registered in China on the premise of meeting the requirements for acquiring distinctiveness.

Thirdly, the revised draft adds the access mechanism for trademark agencies and the commitment system for trademark agencies to practice in good faith, as well as the administrative punishment and credit punishment for illegal agency acts. Since December 1, 2022, the Regulation on the Supervision and Administration of Trademark Agency has been formally implemented. In the revised draft of the Trademark Law, the requirements of standardizing trademark agency behavior and improving the quality of trademark agency services have been reconfirmed, which undoubtedly has stronger legal guiding significance. This will help the long-term healthy development of the trademark agency industry and effectively safeguard the legitimate trademark rights of the parties.

In China, the awareness of intellectual property protection is increasing day by day, but there are still many problems commonly criticized in the field of trademark practice. This draft reflects the in-depth study and tendentious opinions of the CNIPA on the trademark law system from the perspective of departmental legislation and on the basis of widely listening to the opinions of all parties. It can be considered that if the revised draft can be finally implemented, the obligation to use the trademark will be rooted in the whole trademark law, and the drawbacks of the existing principle of “first-to-file, first-to-register” in China are expected to be fundamentally regulated. In practice, this will undoubtedly bring earth-shaking changes and impacts to trademark applicants and the trademark agency service industry. Although this may mean that there will be more complex requirements, higher costs and more challenges in the life cycle of trademark application, in general, it is of great long-term benefit to the compliance operation of bona fide trademark applicants in the Chinese market.

However, it should be noted that the revised draft still has a long way to go before it finally becomes a law. According to China’s legislative procedures, the draft law amendment proposed by the CNIPA needs to be submitted to the Ministry of Justice for review after soliciting public opinions, and then submitted to the Standing Committee of the National People’s Congress for deliberation and approval before it can become a formal law. If it can be included in the five-year legislative plan of the National People’s Congress in 2023, it may take three to five years to complete the final revision of the law, and the contents will be discussed, weighed and revised in more detail. In view of the comprehensive and extensive nature of the revised draft of China’s trademark law, it is, to some extent, an exploration of the model trademark law of modern countries, which deserves our high attention. We should continue to pay close attention to it and wait for its progress.

Written by HU Gang, General Director of Litivation Division, CCPIT Patent & Trademark Office


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