Shanghai Patent & Trademark Law Office LLC

On June 27, 2013, the 3rd Session of the 12th China National People's Congress (NPC) Conference worked to review the 2nd draft amendment to China Trademark Law. The proposed amendment aims to streamline trademark registration and opposition procedures, to reiterate the recognition of well-known trademarks by way of "case-specific identification and passive protection" and to prohibit the phrase "well-known trademark" from labeling in commercial advertising and product packages, etc.

Regarding trademarks of some reputation, the 2nd edition of the proposed amendment maps out that "the mark owner may request protection towards its/his own trademark when injured, provided that it is in long-term consecutive use and enjoys a relatively high reputation among the relevant sector of the public in China". When it comes to the phrase "well-known trademark", it shall not be applied onto any products, packages or sales promotion from any of the production and business channels. In case that the mark owner claims its/his exclusive right via “well-known trademark" in respect of registration examination, infringement damages, dispute handling and civil/administrative proceedings, the CTMO, TRAB and courts of justice are empowered to identify well-known trademarks respectively in line with specific procedures.

To streamline the administrative procedures and lessen the uncertainties, the amendment proposes specific time limits. The preliminary examination shall be completed within 9 months, laid open for public opposition within next 3 months. The CTMO investigation and verification upon opposition shall be finalized within 9 months. The TRAB review re refusal shall be concluded within 6 months; and TRAB review re opposition within 9 months. The aforesaid periods cannot be extended unless otherwise approved by SAIC for extraordinary reasons.

It is pinpointed by NPC that improvements shall be directed to the 2nd draft amendment with respect to trademark infringement. One thing is to alter "the tools 'specifically' used for manufacturing infringing goods or counterfeit registered marks/logos" into "the tools 'predominantly' used for ??", which the SAIC shall confiscate and destroy. The other is to double the compensation ceiling for trademark infringement to RMB2,000,000 ($326,800), while RMB1,000,000 (US$163,400) is previously set out in the first draft amendment, up from RMB500,000 (US$81,700) under the current Law.