1. Amendment to Trademark Law in China
Kangxin Partners, P.C.

2. Trademark development in China
Major amendment in 2014
New IP Court
TO-DO

3. 1. Trademark development in China

4. Timeline of Trademark Law in China
China Trademark Law (1982, 1993, 2001) The 3rd amendment： 2003 ~ 2013 Final decision: August 30, 2013 Date of Effectiveness: May 1, 2014 4

5. Trademark application in China

7. 2. Major amendment in 2014

8. 1. Multiclass application
Article 22
An applicant for trademark registration shall fill in the class and the designation of the goods on which the trademark is to be used in accordance with the prescribed classification of goods and file the registration application.
An applicant for trademark registration may apply for registering the same trademark for several classes of goods through one application.
Documents concerning application for trademark registration may be filed in writing or via data message. 8

9. Conclusion: NOT RECOMMENDED
Benefit VS Shortage
Benefit: Easy management for one mark number
Shortage: Divisional application is not available everywhere
Applications for all classes will be suspended until the decision of opposition in that class is issued. No divisional application is available in this proceeding.
Assignment shall be conducted over whole applications in all classes. No divisional application is available in this proceeding.
Cost does not change for either official or attorney fee.
Conclusion: NOT RECOMMENDED

10. 2. Examination period 10

11. 3. Sound Mark
Article 8 Any sign that distinguishes the goods of a natural person, legal person, or other organizations from those of others, including any word, device, letter, number, three-dimensional sign, color combination, sound and combination thereof, may be registered as a trademark.

12. 4. Opposition TMO Opposition TRAB Review of Opposition
Beijing Intermediate Court
Administrative litigation
TM Infringement litigation（1st instance）
Beijing High Court
TM Infringement litigation（2nd instance）
Invalidation

13. 5. Invalidation (Instead of Dispute cancellation)
Absolute Ground
Relative Ground
TMO
Review by TRAB(9months)
Sue to the Court
N/A
Interested Party
TRAB(9 months)
Sue to the court
TRAB(12 months)

14. 6. Bad faith
The Article 7.1:
The application for registration and use of a trademark shall be based on the principle of good faith.
Grounds for opposition under Article 33: Article 10, 11, 12, 13.2&3, 15, 16.1, 30, 31, 32 (Except Article 7.1)
Grounds for Invalidation under Article 44&45: Article 10, 11, 12, 13.2&3, 15, 16.1, 30, 31, 32 (Except Article 7.1)
The Article 7.1 cannot be independently used as an argument. Then How to use the Article 7.1??

15. Case of Registration in Bad Faith
Party A owns a mark in Class 25 Party A produces the clothes in China and export to the USA Party B (Chinese company or individual) applies for registration of the same mark in Class 18 15

16. Strategy Opposition Non-use cancellation Assignment negotiation
Article 13: Well-known trademarks (little change)
Article 15: Trading relationship（protection range extended）
Article 31.1: Prior right (copyright) (No change)
Article 32.2: The prior use on the same goods and enjoy certain reputation (No change)
Article : Detrimental to socialist morals or customs, or having other harmful influences (No change, but…)
Herein, the Article 7.1 can be used as supplementary argument upon abovementioned articles. 16

17. 7. Agent or Representative
Article 15:
Agent or representative
Interpretation
1) TM agency or representative
2) Sales agent or representative
Before
1)Agent or representative
2) contractual, business or any other relation between the applicant and others
Know other’s prior used but unregistered mark
Now

18. Case of “WEISS” Dispute cancellation
Article 15+similar goods (metal door, building part VS adhesives, special cleansing agent, etc. )?
TRAB- PEK Intermediate court - PEK High Court
Case of “WEISS”
Mark “WEISS” registered in Class 6 in 2008 by Party C
Party A:
Real Owner of mark
Negotiation with Party C over assignment of the mark
Party B:
(exclusive license) Sale representative in China of Party A
Party C:
Affiliate company of Party B in Shanghai;
Became independent company in 2009
Contract of sale representative with Party A in 2009 (Clause of TM protection included)

19. 8. Confusing Similarity in Infringement case
Article 52
1) Identical or similar mark
+ same or similar goods; …
Before
Article 57
1) Identical mark + same goods;
2) Similar mark + same goods;
Identical mark + similar goods
Similar mark + Similar goods
+ Confusing similarity (for well-know trademark but level of similarity is lowered. )
Now

20. 9. Compensation in Infringement case
Article 56
1) Profits of the infringer
2) Losses of the infringed party+ reasonable expenses of the right owner to prevent the infringement
3) RMB 500, 000
Before
Article 63
1) the right owner's actual losses
2) Profits of the infringer
3) Multiple times of the royalties of the registered trademark
4) Seriously malicious infringement：1 – 3 times of the aforesaid amount + reasonable expenses of the right owner to prevent the infringement
5) RMB 3,000, 000
6) Infringer shall bear no liability for compensation if the mark has not been used over the past three years (risk of non-use cancellation)
7) Burden of proof
Now

21. 10. Burden of proof
Article 63 For the purpose of determining the amount of compensation, where the account books and information regarding the infringement are held by the infringer while the right owner has put to the proof as practical as possible, the People's Court may order the infringer submit such account books and information; in case the infringer refuses to submit the account books and information or submit a false version thereof, the People's Court may determine the amount of compensation with reference to the right owner's claim and proof.

22. 11. Use of well-known trademark
Article 14.5 Producers and operators shall neither use characters such as "Well-known Trademark" in the goods, on the packaging or vessels nor apply the same for advertising, exhibition or other commercial activities.

23. How to get Well-Known Trademark?
TMO, TRAB
Through Trademark Opposition before TMO
Through Trademark invalidation before TRAB
AIC
Court

24. 12. Renewal
Article 40 When it is necessary to continue using the registered trademark upon expiration of period of validity, an application for renewal shall be made within: New Law: 12 months Old Law: 6 months before the expiration. If such an application cannot be filed within that period, an extension period of six months may be granted. The period of validity for each renewal of registration shall be ten years as of the next day of the previous period of validity. If the formalities for renewal have not been handled upon expiration of period of validity, the registered trademarks will be deregistered. The Trademark Office shall announce the registered trademarks for renewal.

25. License agreement recordal
13. Recordal of Licence
Article 43
When granting others to use the registered trademarks, the licensor shall file the licence of the trademarks with the Trademark Office for records, which shall announce the same. Without putting the licensing of the trademark on records, the trademark shall not be used to defend the bona fide third party.
Old Law
New Law
Name
License agreement recordal
License recordal
Document
Licensor: POA, Application form, Certificate of Incorporation;
Licensee: Certificate of Incorporation
Licence agreement is required.
Licensee: Application form, Certificate of Incorporation
Licence agreement is not required.
No 3 month restriction after execution of the licence agreement.

26. Recordal of Assignment
Old Law
New Law
Document
Assignor: Application form, Certificate of Incorporation;
Assignee: Application form, POA Certificate of Incorporation
Assignor: Application form, POA, Certificate of Incorporation;
Assignee: Application form, POA, Certificate of Incorporation

27. 14. Argument of prior use of the mark
Article 59.3 Where an identical or similar trademark with certain influence has been used, prior to the use by the trademark registrant, with respect to the same goods or similar goods by others before the trademark registrant's application for trademark registration, the exclusive right owner may not prohibit the user of the aforesaid trademark from continuous use of such trademark within the original scope but may request its user for addition of proper logos for distinction purpose.

28. Use of the mark by Party A
Earlier than
Use and application for the mark by Party B
Party A can counter-argue for the prior use of the mark before the court if Party B sue them
Party B can request A to add logo or other distinctive part to the mark
If Party A use the mark in bad faith;
If Party B register the mark in bad faith;

29. 2080+device+Dental Clinic + Korean characters
Trademark Infringement Ligation
Similar Marks? Prior use?
Guangzhou Intermediate court – Guangdong High Court
Case of “2080’S”
Party A
Chinese company
No “2080’S” in Class 3 applied in 2008 and registered in 2010
No prior use + no reputation
Party B
Licensee of Korean company C
2080+device+Dental Clinic + Korean characters
Registered in Korea in Prior use in China (2007) + certain reputation
(contract, order letter, official receipts, receipt of exportation and importation, etc.)

30. 15.Trademark Agents Article 19: Good faith; Confidentiality;
Obligation to inform;
Refuse commission (Art 15, 32)
Not applying mark except its own service mark

31. Art 68
AIC can issue warning, impose fine:
RMB10,000~100,000 (organization)
RMB 5,000~50,000 (individual)
Forge document, signature, stamp
Unfair competition
Art 19.3 & 4
AIC credit record
TMO and TRAB stop accepting its cases
Civil liability

32. 3. New ip court

33. Beijing IP Court Beijing IP Court IP Tribunal at Beijing High Court
Local court
Civil case: copyright (excluding software), trademark (excluding well-known TM), unfair competition(excluding know-how), technical contract, franchise, domain name;
Administrative case: administrative act of official dept. at county level for copyright (excluding software), trademark ,unfair competition (excluding know-how)
Beijing IP Court
Civil and administrative case: including patent, new plant varieties, integrated circuit layout design, know-how, computer software (including procurement of patent, new plant varieties, integrated circuit layout design)
Administrative case: administrative act of official dept. at State Counsel level for copyright, trademark , unfair competition (including procurement of trademark)
Civil case for well-known trademark
IP Tribunal at
Beijing High Court

34. Shanghai IP Court Shanghai IP Court IP Tribunal at Shanghai High Court
Local court
Civil case: copyright (excluding software), trademark (excluding well-known TM), unfair competition(excluding know-how), technical contract, franchise, domain name;
Administrative case: administrative act of official dept. at county level for copyright (excluding software), trademark ,unfair competition (excluding know-how)
Shanghai IP Court
Civil and administrative case: including patent, new plant varieties, integrated circuit layout design, know-how, computer software (excluding procurement of patent, new plant varieties, integrated circuit layout design)
Administrative case: administrative act of official dept. above county level for copyright, trademark , unfair competition (excluding procurement of trademark)
Civil case for well-known trademark
IP Tribunal at
Shanghai High Court

35. Guangzhou IP Court Guangzhou IP Court IP Tribunal at
Local court
Civil case: copyright (excluding software), trademark (excluding well-known TM), unfair competition(excluding know-how), technical contract, franchise, domain name;
Administrative case: administrative act of official dept. at county level for copyright (excluding software), trademark ,unfair competition (excluding know-how)
Guangzhou IP Court
Civil and administrative case: including patent, new plant varieties, integrated circuit layout design, know-how, computer software (excluding procurement of patent, new plant varieties, integrated circuit layout design) in Guangdong province (except Shenzhen);
Administrative case: administrative act of official dept. above county level in Guangzhou city for copyright, trademark , unfair competition (excluding procurement of trademark)
Civil case for well-known trademark in Guangdong province(except Shenzhen)
IP Tribunal at
Guangdong High Court
Guangzhou IP Court

36. 4. TO - DO

37. To-Do
Strategy of trademark portfolio management and protection under new law
Update the deadline for all pending cases
Set-up/Improvement of Evidential base
Review the success rate of all pending opposition (evaluate the risk of infringement)
The change of examination criteria for new trademark application 37

38. Thanks! David Song Kangxin Partners, P.C.
Tel:

39. KANGXIN PARTNERS, P.C. Beijing · Changsha · Wenzhou · Shenyang · Suzhou · Xi’an · USA · Germany · Japan Floor 16, Tower A, InDo Building, A48 Zhichun Road , Haidian District, Beijing , P. R. China T: (8610) F: (8610) 　E: