home_img1_trademarkOn August 30, 2013 the PRC Standing Committee of the National People’s Congress approved the new PRC Trademark Law. The new provisions will be in effect from May 1, 2014. An in – depth analysis of the new law will definitively be too lengthy for the purpose of this post, therefore, for sake of brevity, we will outline some of the major changed in the new law:

1) Combination of sounds: contrary to current provisions, according to the new law it will be possible to register as trademark combination of sounds.

2) Well – known marks: new provisions aim to outline more in detail protective measures for well – known marks, listing in which case registration and use of trademarks identical or similar to well – known marks shall be forbidden. Additional provisions further specify how start litigation or administrative procedures for the protection of well – known marks.

3) Registration in bad faith: good faith is becoming one of the cornerstone of the new law, and the cases according to which is possible to oppose to the registration of a mark due to bad faith of its applicant have been expanded and better outlined (as, for example, in the case of a mark registered by the business partner of the de – facto owner of the mark).

4) Agents: several clauses of the new law specifically govern activities and professional conducts of trademark agents, among which on how to establish the professional relationship with the agent, the duty of provide a certain level of information to the client, the obligation of acting in good faith towards the client and towards third parties (including but not limited to the case in which the agent intentionally register on behalf of its client a mark that it knows be de facto owned by a third party).

5) Multiple classes registration: contrary to previous provisions, the new law explicitly allows to register a mark in more than one class with a single application.

6) Deadlines: the new law sets specific deadlines for applicants, authorities and claimants in connection to various procedures related to application for, examination of, and claims on trademarks. It is important to outline that the new law aims to reduce the trademark registration procedure to 9 months from the moment of the application to the moment of issuance of the Registration Certificate (while, at present time, the procedure lasts approximately one year, and in the past we witnessed registration procedures of over 2 years). The deadline to apply for the renewal of trademark that is going to expire (we have to point out that the validity of the registration of an ordinary mark is 10 years from the moment of the registration itself) has been extended from 6 month to one year prior the date of expiration of the mark.

7) Fines for infringors: last but not least, the administrative sanctions for trademark infringors and the level of compensation for the parties damaged by infringors have been amended and, in general, increased, so to discourage violation of the law. For example, the administrative sanction for violation of the proprietary rights of a trademark will be now equal to 5 times the illegal turnover of the infringor , with the minimum fine of Chinese Yuan 250,000 in case of no illegal turnover or of illegal turnover up to 50,000 CNY. The law currently in force sets a fine of the total amount of the illegal turnover, with a maximum fine of 500,000 in case the level of turnover could not be determined.

We believe this new law represents a big improvement for the protection of the trademarks in China: we shall now wait to see how competent authorities will proceed with its implementation.

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