Amendments to Trademark Law (2019-04)
On April 23, 2019, China’s Trademark Law was amended during the 10th meeting of NPC Standing Committee. This revision involves a total of 6 articles, which will be implemented on November 1, 2019. This is the fourth revision of China’s Trademark Law after 1993, 2001, and 2013.
The main points of this revision of the "Trademark Law" are as follows.
1. Prohibiting bad-faith trademark filings
After the revision, Article 4 of the Trademark Law was expanded to include "rejection of bad faith trademark registration without an intention,” authorizing the examiner to voluntarily decline at the initial examination stage ex officio. In Article 19 (3) it was added that a trademark agency could not accept the commitment if it knows, or ought to know, that the trademark to be registered by such clients is in bad faith. In Article 33 and Article 44, trademark registration for a purpose other than use (Article 4) and trademark agency applied trademark filings for bad-faith or accepted the commission to apply for trademark registration (Article 19 (4)) became added grounds for filing an opposition and invalidation.
Regarding bad-faith trademark filings or bad-faith trademark litigation by applicants and trademark agencies, Article 68 (4) mandates that “bad-faith trademark filings, administrative penalties such as warnings and fines will be given on a case-by-case basis. The people’s court shall impose penalties for bad-faith trademark lawsuits according to law.” Article 68 (1) (iii) added a penalty system for trademark agencies violating Article 4 of the revised “Trademark Law”.
This revision sets containment measures for combating bad-faith trademark filings from four stages of the trademark application process, namely initial examination, trademark agency, trademark opposition and trademark invalidation. They also stipulate penalties for bad-faith trademark filings or bad-faith trademark litigation.
2. Enhanced punishment for trademark infringements
When it comes to assessing the consequences of bad-faith trademark infringement, under Article 63 of the “Trademark Law”, the maximum amount of punitive damages has been increased from "one to three times" to “one to five times.” In addition, the maximum amount of statutory damages has been raised from “RMB 3 million” to “RMB 5 million”. The revised terms reflect further improvement of the amount of punitive damages for intellectual property infringements.
In addition, the newly added paragraphs 4 and 5 of Article 63 stipulate that during the trial of trademark disputes, at the request of the trademark owner, the people’s may order to destroy commodities with counterfeit registered trademarks and materials and tools that are mainly used to manufacture commodities with counterfeit registered trademarks; commodities with counterfeit registered trademarks may not enter commercial channels after merely removing the counterfeit registered trademarks.
This revision of the “Trademark Law” clarified that registered trademarks must be used for an intention. It also strengthens the protection of trademark rights by raising the standard of infringement compensation. The promulgation of the new “Trademark Law” provides an effective legal basis for addressing bad-faith trademark registration behaviors that have long plagued our society so that the legitimate rights of the right holder could be protected.
(Adapted from NPC’s website)