Written by: Wang Si (Intellectual Property)
Main contents: further cracking down on malicious trademark filings; expanding the scope of ex officio revocation of trademarks; facilitating the digital transformation and upgrading in the trademark industry; management of malicious non-use cancellations and the same day filings.
China National Intellectual Property Administration (CNIPA) recently responded to a Proposal to Accelerate the Revision of the Trademark Law and its Implementing Regulations jointly raised by Huang Xiqin and 14 other members of the Fifth Session of the 13th National Committee of the Chinese People’s Political Consultative Conference (CPPCC) on August 31, 2022. The proposal was not open to the public in its entirety, but some important trends of the new revision of the Trademark Law and the implementing regulations could be noticed from the CNIPA’s reply, which are summarized as follows.
- In 2019, in response to the urgent and prominent problems in the trademark field, amendments were made to individual articles of the Trademark Law to increase the strength of fighting against malicious trademark filings (such as enlarging the circumstances in rejecting trademark registration) and to strengthen the protection of trademark rights (such as increasing the amount of compensation). The CNIPA has been following up on the implementation effects of the amended Trademark Law and the implementing regulations, and actively promoting a new round of comprehensive revision thereof. At present, the new revision of the Trademark Law and its implementing regulations have been included in the Legislative work Plan 2022 of the State Administration for Market Regulation.
- The new revision to the Trademark Law will further crack down on trademarks applied for/registered by deception or other improper means. By increasing the amount of fines, clarifying the civil liability for damages caused to others due to malicious trademark filings, establishing a system for transferring trademarks filed maliciously, and improving the rules for prohibiting registration of trademarks containing geographical names, etc., malicious registrations of trademark are expected to be effectively regulated. At the same time, to prevent the abuse of trademark rights, a registered trademark can be revoked if the exclusive trademark rights are exercised improperly. A counter-compensation system for malicious litigation is also under study. At the stage of determination of trademark right, it is proposed to set up the procedure of ex officio revocation of the publication of a preliminarily approved trademark. Further, the law will continue to strengthen the supervision of trademark agencies.
- The revision of the law will further optimize the procedures, especially the trademark opposition procedure, in order to reduce the cost in protecting the lawful trademark rights. In addition, the revision will improve the convergence of relevant procedures to avoid procedural vacillation and waste of administrative resources.
- The revision of the law will continue to emphasize the obligation to use trademark and highlight the foundational position of trademark use. The CNIPA is studying the feasibility of introducing a system of undertaking to use the applied for trademark and actively submitting statement of use during the validity period of trademark registration. It is proposed to add provisions about ex officio revocation of trademarks when the trademark registrant fails to fulfill the use commitment, fails to submit a statement of use in accordance with the law, or exercises the exclusive trademark rights improperly.
- The revision of the law will assist in the digital transformation and upgrading of the trademark industry. The CNIPA is studying to improve the rules related to electronic filing, electronic service, electronic evidence, electronic registration certificate, electronic documents and electronic files, and promote electronic and convenient business processing.
- The CNIPA is striving to form the proposed draft amendments to the Trademark Law and its implementing regulations by the end of 2022, and will solicit comments from the society openly. The CNIPA will submit legislative proposals and related materials to the legislature in due course, striving to have the revision of the Trademark Law and its implementing regulations included in the five-year (2023-2028) legislative plan of the Standing Committee of the 14th National People’s Congress.
In addition, the CNIPA recently held a research symposium on trademark business work, listening to the views and suggestions of representatives from enterprises, trademark agencies and industry associations on trademark work. On October 11, 2022, the CNIPA disclosed their decision formed during the said symposium to immediately establish a special platform on their official website to receive complaints and clues, set up on-site consultation windows in the CNIPA’s trademark registration hall, introduce a special system to manage malicious non-use cancellations as soon as possible, and incorporate the proposal to combat malicious same-day filings into the next system construction.
From the above official reply letter of the CNIPA and the decision of the symposium, it can be understood that the new revision of the Trademark Law and its implementing regulations aim to meet the needs of the market and the development of the times, and to promote the shift of the trademark protection system of the past decades in China from trademark registration centered to use focused. With the orientation of actual use of trademarks, the system will emphasize the legitimacy in trademark filings and the standardization of enforcing trademark rights, regulate malicious trademark filings and the abuse of trademark right, and prevent system loopholes by cracking down on malicious non-use cancellations and same-day filings. The CNIPA will also propose to set up the procedure of ex officio revocation of the publication of a preliminarily approved trademark, and add provisions about the ex officio revocation of trademark registrations. The CNIPA will improve the operation of e-filings and other related procedures to enhance efficiency and convenience.