The third amendments to China's Trademark Law were approved on August 30, 2013, and will enter into force on May 1, 2014. Aligned with the New Trademark Law, the Implementing Regulations are currently receiving proposed amendments. Over the last three decades ever since 1982 when the Law debuted, this third amendment is finalized at a distance of 12 years. All the efforts are aimed at streamlined registration procedures, fair market competition and stringent right enforcement.

The key changes to the Law are introduced below in seven spectra:

Filing, Renewal and Licensing

1. The sound mark is registrable in addition to "visual symbol". (Art. 8)
2. The new taboo on trademark registration is: (Art.10)
3. mark identical with or similar to national anthem, army emblem or army song;
4. mark identical with the name or sign of any of China's State organs;
5. mark confusingly tied with other goods' quality or origin.
6. The time limits are defined in the procedures:
7. Preliminary examination of an application for registration up to 9 months. (Art. 28)
8. TRAB review re refusal up to 9 months; or otherwise extendable for 3 months under special circumstances, if approved by SAIC. (Art. 34)
9. The multiple-class application is available by a single application Request Form for one mark. (Art. 22)
10. Preemptive registration is barred. Under the bona fide principle, any party is not allowed to prejudice others' prior rights, nor, by improper means, to preemptively register the prior-use marks of some reputation. Provided that any contractual, commercial relations or whatever relations lie with the prior-use mark holder, the applicant shall not knowingly register the mark on the identical or similar goods, and will have the application refused in case of opposition by the party concerned. (Art. 15 & 32)

Opposition

1. The time limit for investigation and verification upon opposition is up to 12 months; or otherwise extendable for 6 months under special circumstances, if approved by SAIC. (Art. 35)
2. The time limit for TRAB review re opposition is up to 12 months; or otherwise extendable for 6 months under special circumstances, if approved by SAIC. (Art. 35)
3. The opposing party is limited to prior right holders and relevant interested parties, which is aimed to eliminate opposition abuse. (Art. 33)
4. The opposing party shall initiate an invalidation proceeding, if the opposed mark is registered for no grounds unfavorable to the mark owner. The previous review option on the part of the opposing party is therefore superseded and cannot inhibit the mark registration in the specified time limit. (Art. 35)

Invalidation

The invalidation proceeding is newly introduced to substitute for the cancellation procedures at CTMO, the review re opposition if unsuccessful and dispute procedures at TRAB. Notably, the causes of invalidation and eligible parties for filing invalidation are specifically defined. In case the mark is invalidated, its exclusive right shall be deemed to be non-existent from the beginning.

1. The CTMO can ex officio invalidate the mark in case of absolute prohibitions (Art. 10), distinctiveness issues (Art. 11), 3D requirements (Art. 12) or registration by any fraudulent or unfair means (Art. 44). The appellant can go to TRAB for review, which shall be completed within 9 months; or otherwise extendable for 3 months under special circumstances, if approved by SAIC. (Art. 44)
2. Any party can file a request for invalidation with TRAB in case of absolute prohibitions (Art. 10), distinctiveness issues (Art. 11), 3D requirements (Art. 12) or registration by any fraudulent or unfair means (Art. 44). The time limit for TRAB review is up to 9 months; or otherwise extendable for 3 months under special circumstances, if approved by SAIC. (Art. 44)
3. Any prior right holder or relevant interested party can file a request for invalidation with TRAB within five years from the date of registration in case of well-known trademark protection (Art. 13), registration disputes by agent or via contractual, commercial relations (Art. 15), misleading geographic marks (Art. 16), identical or similar on both marks and goods (Art. 30) or two applications filed on the same day issues (Art. 31). The time limit for TRAB review is up to 9 months; or otherwise extendable for 3 months under special circumstances, if approved by SAIC. Where a well-known mark is registered in bad faith, the genuine owner thereof shall not be restricted by the five-year limitation. (Art. 45)

Use

1. One more reason for cancellation added to three-year non-use, self-altering is that the registered trademark becomes a generic name on goods covered by the registration, whereby any party can request the CTMO to cancel it. The time limit for CTMO to decide is up to 9 months; or otherwise extendable for 3 months under special circumstances, if approved by SAIC. (Art. 49)
2. Administrative penalties shall be imposed for any misuse, such as selling products without mandatory trademark registrations (Art. 6), passing-off as registered trademarks (Art. 52) and applying taboo marks (Art. 10). Where illegal business revenues exceed RMB50,000, the official fines will be 20% or under. Where illegal business revenues are less than RMB50,000, the official fines will be up to RMB10,000. Any misuse of "well-known trademarks" for the purpose of advertising will incur the official fines of RMB100,000. (Art. 51-53)
3. In the event of any prior use identical or similar on both marks and goods, the trademark registrant shall allow the prior mark to be applied within the original scope of use; however, it is entitled to request the labeling for proper distinction. (Art. 59)

Enforcement

1. When the mark owner endeavors to provide sufficient evidence for its compensation claim in the absence of necessary accounts, documents etc., the court may order the alleged infringer to bear the burden of proof for control of accounting information. Given false or void information relating to trademark infringement, the court may decide on the compensation for damages with reference to the owner's accusations and discovered evidence. (Art. 63)
2. The punitive compensation can be one to three times the amount of damages in case of bad-faith infringement, which is of severe nature. (Art. 63)
3. The upper limit for statutory compensation soars from RMB500,000 to RMB3,000,000. (Art. 63)

Well-known Trademark

1. Well-known trademark recognition is conducted only in a passive approach of "case-specific identification". Namely, it will not be initiated until the mark owner requests that his/its right is infringed on different goods. (Art.13-14)
2. Signs or words of "well-known trademark" are no longer allowed to be applied to products, packages or containers, nor in commercial activities like advertisements, exhibitions or fairs, etc. (Art. 14)
3. Use of a third party's registered trademark or unregistered well-known trademark as part of company name, which misleads consumers and constitutes unfair competition, shall be handled pursuant to Countering Unfair Competition Act of P. R. China. (Art. 58)

Duties and Obligations of Agencies

1. The trademark agency is not allowed to register any trademarks other than its own service mark on representation. (Art. 19)
2. The trademark agency shall not disclose the confidentiality information of Client, nor represent any preemptive registration. The agency shall keep Client informed of any circumstances where the registration is nothing up to legal requirements. (Art. 19)
3. Additionally, the member agency shall be strictly governed by trademark associations at all levels. Punishment shall be imposed and go public instantly.