CHINA INTELLECTUAL PROPERTY LAW NEWSLETTER
SPECIAL ISSUE:
Commentary on China's New Trademark Law
On October 27, 2001 the final amendments to the Trademark Law were approved by the Standing Committee of the National People's Congress of the People's Republic of China. The new amended version has become effective as of December 1, 2001. The new version, in the spirit of abiding by WTO rules, borrows much language from the Trade-Related Aspects of Intellectual Property Rights (TRIPs) agreement and makes great strides in improving intellectual property protection in China.
Lehman, Lee & Xu's China Intellectual Property Law Newsletter is devoting three issues to explaining the most significant changes in the Trademark Law. We hope this three-part explanation will provide our colleagues and other interested parties with a greater understanding of the consequences the recent amendments will bring to IP holders.
Part II of III
Alteration
Article 22 was revised from the previous Article 14 of the old Trademark Law. It now stipulates that if the symbol of a registered trademark is to be altered, the holder must apply for a new registration. The word "symbol" refers to the any of the elements of a registered trademark, including devices, words, characters, letters, digits or three-dimensional symbols combined with elements of colors. The old Trademark Law was unclear in that it only mentioned that where any "word" or "device" of a registered trademark was to be altered, one must apply for a new registration.
Priority Right
Article 24, concerning the priority right was a rule that China has long followed in accordance with the Paris Convention, but has not included in the Trademark Law until now. It reads that applicants, who file the same trademark application in China within six months from the date of such filing in foreign countries, can enjoy the priority right according to any agreements entered into or international treaty jointly participated by such country and China, or according to principals mutually admitted.
To enjoy the right of priority one should declare such intention in writing while filing the application. Priority documents should be submitted at the time of filing or within three months after the filing date in China if the applicants wishes to use the above-mentioned priority right. If the applicant fails to make such a declaration in written form or by not submitting the priority documents, the applicant will not enjoy the right of priority.
International Exhibitions
Article 25 determines that applicants who have used a trademark on products shown at any international exhibition held by or permitted by the Chinese government, can file an application for registering such trademark within six months after the date of showing the product at such an exhibition and enjoy the right of priority.
To enjoy such priority right, a written declaration should be submitted while filing the application. Also, certification documents relating to the name of the exhibition showing such products, proof/evidence of the use of such trademarks on the products exhibited and the date of exhibition shall also be submitted within three months after the date of filing the trademark application. If no such written declaration or certification documents are submitted, it will be considered that the application does not enjoy the right of priority.
Therefore, applicants who have exhibited their products should remember to collect and retain evidence regarding using a mark at an international exhibition in order to file a trademark application and enjoy the use of the right of priority in the future. Although this recent addition has not changed China's "first-to-file" registration system, it now allows more protection to those applicants who first used a trademark but did not file a trademark application immediately. They only must be able to file the application within six months after using such mark and provide evidence of such use.
Protection of Unregistered Trademarks In-use
Article 31 stipulates that applying for the registration of a trademark shall not prejudice against any existing prior right of others, and it shall also not be considered an act of registering a trademark, which has been already widely used and recognized by the public.
Compared to the protection of the old Trademark Law, Article 31 broadens the scope of protection. The old Trademark Law only protected those trademarks that have already been approved, whereas the amended Law now protects trademarks that are not approved, but have been applied for registration and also in use. In the past, although applicants could apply for the revoking of a improperly registered trademark, the new Article 31 stipulates this clearly.
Introduction of Judicial Review
Article 32 and 33 stipulates that the decisions of the Trademark Review and Adjudication Board ("TRAB") are not final and that any party who is not satisfied with the decision made by TRAB may file a law suit with the People's Court within 30 days from receipt of the notification of a decision to an appeal against a trademark application rejection or an appeal against an opposition decision made by TRAB.
Article 32 stipulates that when the application for registration of a trademark is rejected and no publication of the trademark is made, the Trademark Office shall notify the applicant of the decision in writing. Where the applicant is dissatisfied, he may, within fifteen days from receipt of the notification, apply for a review with the Trademark Review and Adjudication Board. The Trademark Review and Adjudication Board shall make a final decision and notify the applicant in writing.
Parties who are dissatisfied with such decision may, within thirty days from receipt of the notification, file a lawsuit with the People's Court.
Article 33 says that when an opposition is filed against the trademark that has, after examination, been preliminarily approved and published, the Trademark Office shall hear both the opposing and the opposed party state the facts and grounds and shall, after investigation and verification, make a decision. Where any party is dissatisfied, he may, within fifteen days from receipt of the notification, apply for a review, and the Trademark Review and Adjudication Board shall make a final decision and notify both the opposing and the opposed party in writing.
Where any party is dissatisfied with the decision made by the Trademark Review and Adjudication Board, he may within thirty days from receipt of the notification, file a lawsuit with the People's Court. The People's Court shall then notify the other party to participate in such a lawsuit as the third party.
Article 34 is also a new stipulation. It states that if parties who are dissatisfied with the decision made by the Trademark Office do not apply for a review, or if parties who are dissatisfied with the decision made by the Trademark Review and Adjudication Board do not file lawsuits with the People's Court, the written order of the preliminary decision made by the Trademark Office or the written order of the preliminary decision made by the Trademark Review and Adjudication Board will go into effect.
The supplementary stipulations of Article 34 determine that if it is decided that the opposition is not justified, the registration shall be approved, a certificate of trademark registration shall be issued and the trademark shall be published. If it is decided that the opposition is justified, no registration shall be approved. If the opposition is not justified and the registration is approved, the date of acquiring the exclusive right to such trademark by the registrant (the registration date) shall begin from the date of expiration of the three-month opposition period.
The above supplementary stipulations to Article 32 and Article 33 apply only when no party applies for a review with the Trademark Review and Adjudication Board or files a lawsuit with the People's Court.
Registration Date of Opposed Trademarks
Stipulations regarding the registration date of a trademark that encounters an unjustified opposition were previously implemented, but not included in the old Trademark Law. As the decision regarding an opposition could take as long as one or two years after the date of filing the opposition application, there was confusion regarding the registration date of such an opposed trademark. The new stipulation specifies that the registration date for such a trademark, one that is approved after an opposition examination, shall not be the date that the Trademark Office makes the decision regarding the opposition or the date that the Trademark Review and Adjudication Board makes the decision regarding an appeal, but the expiration of the date of the three month opposition period of such mark.
Our next issue will conclude our three-part series on the new Trademark Law. The series will then be published on www.chinalaw.cc in its entirety.
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The China Intellectual Property Law Newsletter is intended to be used for news purposes only. It should not be taken as comprehensive legal advice, and Lehman, Lee & Xu will not be held responsible for any such reliance on its contents.
