Amendments to China’s Trademark Law

By Franco de Barba
Head of Trademark Department

MERX IP
fdebarba@merx-ip.com 

On April 23, 2019, the Tenth Session of the Standing Committee of the 13th National People’s Congress passed a decision to amend the Trademark Law of the People’s Republic of China. These amendments will be implemented on November 1, 2019.

The purpose of Amendments is to more effectively crack down on malicious applications that are not for use purpose, and to impose penalties on trademark infringements in order to create more optimized convenience, fair market atmosphere and business environment.

Six articles of the Law have been amended. They address issues including bad-faith trade mark applications and damages for trade mark infringement.

Art. 4, paragraph 1, has been amended so as to include this ground of refusal:

“Where any natural person, legal entity or other organization, in the course of his or its production or business operations, intends to acquire the exclusive right to use a trademark for his or its goods or services, an application should be filed with the Trademark Office for registration of the goods trademark. Applications for trademark registrations in bad faith which are not intended for use shall be refused.”

In addition, there is a new requirement on trade mark agents not to accept instructions to file applications which they know or should know are filed without intent to use or in bad faith (Article 19). Moreover, Article 68 now states: “Any entity filing trade mark applications in bad faith shall be given warnings or imposed a fine, according to current situation. If a trade mark lawsuit is filed on a malicious basis, the people’s court will impose a penalty accordingly.”

Bad faith has also been added as a basis for opposing and invalidating trade mark registrations in Articles 33 and 44 respectively.

Regarding infringement proceedings, in examining trademark dispute cases, the people’s court shall, at the request of the rights holder, order the destruction of commodities bearing counterfeit registered trademarks, except in special circumstances; order the destruction of materials and tools mainly used to manufacture commodities bearing counterfeit registered trademarks, without compensation; or, in special circumstances, order the prohibition of the aforementioned materials and tools from entering commercial channels, without compensation.

Commodities bearing counterfeit registered trademarks shall not enter commercial channels after only removing counterfeit registered trademarks.

We are confident that the new amendments of Chinese Trademark Law will provide stronger protection to good faith trademark owners.

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