Compared with the old Trademark Law, the Revision represents marked
efforts to further conform to the norms for trademark protection
as set forth in the Paris Convention and the WTO TRIPS agreement.
As a result, the Revision aims to provide enhanced protection of
trademarks and strengthen enforcement power with respect to trademark
infringements, as discussed in greater detail below.
JUDICIAL REVIEW OF ADMINISTRATIVE ACTIONS
The most prominent change in the Revision is the introduction
of judicial review of administrative decisions regarding the administration
and adjudication of trademark rights. The TRIPS mandates the right
to judicial or quasi-judicial review of administrative decisions
relating to the application for registration, maintenance or revocation
of trademarks. However, under the old Trademark Law, the Trademark
Review and Adjudication Board had the ultimate authority to make
final decisions in these areas.
Articles 32, 33 and 43 of the Revision grant to an applicant,
opponent and any other relevant party the right to judicial review
of administrative decisions, with respect to (i) the Trademark
Office's rejection of a trademark registration application, (ii)
the opinion of the Trademark Review and Adjudication Board in
an opposition proceeding; and (iii) the ruling of the Trademark
Review and Adjudication Board on the maintenance or revocation
of a registered trademark.
ENHANCED PROTECTION
The Revision provides increased protection of trademark rights
by expanding the scope of legal protection for or in relation
to the ownership of trademark rights, and restraining activities
that might interfere with such rights, as follows:
Owners
Under the old Trademark Law, Chinese individuals had to register
a privately-owned company or a proprietorship before they obtained
a trademark. The Revision by contrast allows domestic, as well
as foreign, individuals to own trademarks. Moreover, the Revision
allows two or more natural persons, legal persons or other organizations
to be joint trademark holders. Joint ownership not only provides
an additional form of trademark ownership for the companies and
individuals involved in their strategic planning, but also may
serve as a form of compromise for resolving trademark disputes,
especially in those situations where the trademarks have been
used by many people and the use history of the trademarks is impossible
to trace.
Definition of Trademark
The definition of trademark in the Revision has been updated
to be consistent with the trademark definition in Article 15 of
the TRIPS. Thus trademarks are defined as all visible symbols
that can distinguish products and services between different providers,
including characters, graphs, letters, numbers, 3-D marks and
colour compilations, as well as the compilations of all of the
above. The addition in the Revision of 3-D marks and colour compilation
marks will afford more choices to product and service providers
in deciding or designing their unique trademarks.
Additional Types of Protected Marks
The Revision, in compliance with the requirement of Article 7
of the Paris Convention, has extended protection to group trademarks
and certification trademarks. Before the promulgation of the Revision,
group trademarks and certification trademarks were protected under
the Registration and Administration of Collective and Certification
Trademarks Procedures promulgated by the State Administration
of Industry and Commerce (the SAIC) in 1994.
In addition, in response to the requirement of the TRIPS (Paragraph
3, Section 2) that geographic symbols be under trademark protection,
the Revision provides that if a trademark contains a geographic
symbol, but the geographical origin of the products is not the
area indicated by the geographic symbol, and the use of such trademark
is misleading to the general public, the trademark at issue is
not allowed for registration and the use of such trademark is
prohibited. However, if the registration of such trademark is
obtained in good faith, the registration shall continue to be
effective.
Well-known Trademarks
The old Trademark Law does not directly protect well-known trademarks.
Rather, they are protected instead by an administrative regulation,
the Recognition and Administration of Well-known Trademarks
Tentative Provisions, promulgated by the SAIC in 1996. Under
that administrative rule, it is difficult to obtain authentication
of well-known trademarks and the protection afforded to such marks
is by no means comprehensive.
Consistent with the Paris Convention and the TRIPS, both of which
require their member countries to provide protection for well-known
trademarks, the Revision now prohibits anyone from registering
or using a trademark that copies, imitates or interprets well-known
trademarks, if the former will mislead the general public or harm
the interests of the well-known trademark owner. Article 14 of
the Revision sets forth the factors for determining whether a
trademark is a well-known trademark. The owner of the well-known
trademark has the right to ask the Trademark Review and Adjudication
Board to de-register the forged trademark within five years after
the conflicting trademark is registered.
It should be noted, however, that the scope of protection allowed
a well-known trademark registered in China and that permitted
a well-known trademark not registered in China are different.
For well-known trademarks registered in China, the protection
covers almost all the products, while for well-known trademarks
not registered in China, the protection only covers products which
are similar to the products on which the well-known trademark
is used.
Existing Rights
The Revision provides that no trademark application be allowed
to harm the pre-existing right of others; nor shall a trademark
applicant register by dishonest means in his own name another's
trademark that has gained recognition. The pre-existing rights
may include rights to names, portraits, copyrights, industrial
designs and enterprise names. The Revision also prohibits registration
application agents or representatives from registering trademarks
under their names without the prior authorization of the trademark
owners, in response to Article 6 of the Paris Convention.
Priority Rights Under Paris Convention
Until the promulgation of the Amendment, a SAIC notice grants
priority right to a trademark applicant from a member country
to the Paris Convention who had already applied for registration
of the same trademark in a foreign country, as required by the
Paris Convention (Articles 4). And despite the requirement in
the Paris Convention (Article 11) for tentative protection of
trademarks that are used in an international exhibition, there
is no legal provision for such tentative protection in the old
Trademark Law.
The Amendment now provides protection for both types of situations
(Article 24 and Article 25). An applicant will be able to enjoy
priority right in its application for registration (i) within
six months after the applicant for the first time applies for
registration of the same trademark in a foreign country, if the
applicant applies in China for the same trademark on the same
products; or (ii) within six months after a trademark is used
for the first time on products which are presented in an international
exhibition hosted or recognized by Chinese government.
Reverse Counterfeiting
Article 52 of the Revision provides that "reverse counterfeiting"
constitutes an infringement under the Trademark Law and shall
be punished. Reverse counterfeiting refers to the practice in
distribution or trading whereby a distributor or a dealer purchases
products from others and replaces the trademark of the purchased
products with the trademark of his own. After the replacement,
the distributor or the dealer will put the products in the market
as if they were his products. Under the old Trademark Law, there
is no legal basis to punish such practice.
Excluded Trademarks
In response to Article 6 of Paris Convention which prohibits
a member country from registering the official symbols and examination
seals of other member countries as trademarks, the Revision now
prohibits the registration as trademark of all the following items:
(i) symbols identical or similar to official symbols and examination
seals of other member countries which indicate control implementation
or guaranty, unless otherwise authorized; and (ii) symbols bearing
the names of the specific location of the central government authorities,
or the names and drawings of central government buildings.
With respect to 3-D trademarks, those 3-D shapes which are in
the 3-D form because of the nature of the products, the need to
achieve some specific technical effects, or of which substantial
value depends on such form are not permitted to be registered
as trademarks under the Revision.
STRENGTHENED ENFORCEMENT POWER
The Revision strengthens the enforcement of trademark law by
providing more remedies for violations, and increases and clarifies
the amount of damages for such violations.
Remedies for Violation
While the Old Trademark Law only allows two forms of remedy for
infringement, confiscation of illegal income and imposition of
fines, Article 53 of the Amendment, consistent with TRIPS' requirement,
has granted greater enforcement power to administrative authorities
to penalize trademark infringement by such additional measures
as injunction against infringement activities, confiscation and
demolition of infringing products and equipment used for the sole
purposes of manufacturing infringing products or forging registered
trademarks, and the confiscation of materials, tools and equipment
used mainly for infringement purposes.
The TRIPS requires member countries to take tentative measures
if credible evidence of infringement exists to avoid any delay
that may result in irrevocable losses to the trademark owner or
the evidence of infringement. Consistent with such a requirement,
the Revision permits the People's Court to issue injunctions against
infringing activities, and orders for preserving the property
or the evidence involved where credible evidence of infringement
is presented.
Damages Clarified
Article 56 of the Revision reflects TRIPS' requirement that the
damages for trademark infringement be sufficient to make up for
the losses suffered by the trademark owner, and that the infringing
party, at the discretion of the adjudicating authorities, pay
all the expense incurred in related legal or administrative proceedings.
The Amendment allows damages in the form of any of the following:
In its WTO accession agreement, China made the following commitments
on trademark protection upon its accession:
The Revision, like the new Copyright Law, reflects most of China's
intellectual property right commitments under the WTO. The changes
in the Revision hold the promise for greater trademark protection
in China in the future. However, apart from the fact that the Revision
is yet to be interpreted by the PRC, Trademark Law Implementing
Rules, a significant amount of time and further efforts are
needed for China to significantly improve its protection of trademark
rights.
