By Mao Lei and Xu Jun
With the development ofChina’s socialist market economy, some provisions of the current Trademark Law have failed to meet the actual needs. Under the cu rrent law, for example, the trademark registration process is cumbersome, the period of time granting and confirming trademark rights is too long, the phenomenon of maliciously registration is common, and trademark infringements have not been effectively curbed.
Provision on the time limits for trademark examination added
The current Trademark Law requires a prompt review of trademark registration and reexamination applications, with no deadlines specified. “In soliciting opinions on the draft revisions of the current Law, a large number of companies suggest deadlines be specified. They hold that the time that the current review cost is too long. As a result, the trademark rights and benefits of companies are left in a long period of undetermined and unprotected state and their corporate brand strategies are affected,” said Wang Qing, deputy director-general of the Office for Economic Law of NPC Legislative Affairs Commission.
According to Wang, to ensure that the added time limits are practical, the revision takes reference to the average review time in practice. Time limits for trademark examination are added to the new trademark law: nine months for a trademark bureau to conduct a preliminary review; 12 months for the investigation to verify a reconsideration application; 9 months for the Trademark Review and Adjudication Board to reexamine the decision by the trademark bureau of refusing and deciding not to announce an application; 12 months for the Trademark Review and Adjudication Board to reexamine the decision by the trademark bureau that a reconsideration is justified and the relevant registration is rejected. In case of special circumstances, the time limit may be extended 3 months or 6 months respectively. Time limits for the examination of the nullification or the cancellation of a trademark are also set up accordingly.
The trademark registration opposition system improved
Under the current Trademark Law, after a trademark registration application passes the preliminary review and gets announced, an opposition can be put forward by any person for any reason. The opposition shall be adjudicated first by the Trademark Bureau. A reexamination application may be filed by the opposition applicant to the Trademark Review and Adjudication Board. He may also file a lawsuit when he receives the unfavorable reexamination ruling.
“The current opposition procedure is too complicated and the review period is too long, affecting the applicant to get the trademark registered timely. In practice, some units and individuals put forward malicious oppositions, delaying the applicant to get the trademark registered and thus obtaining improper benefits. Many applicants were forced to pay in property or in money terms in exchange for the other party not to issue an opposition or draw back an apposition which has been raised,” Wang says.
“To cope with problems in practice, the new Trademark Law simplifies the opposition procedures and cancels the procedure by which the Trademark Bureau examine and adjudicate an apposition. It provides that the Trademark Bureau can issue a direct decision to grant or reject a registration application. The party may ask for the nullification of the registered trademark if the Trademark Bureau consider the opposition unjustified. The party against which the opposition is raised may apply for an reexamination if the opposition deemed justified.
According to Wang, in order to reduce malicious oppositions, the new Trademark Law also provides that only the prior right owner or the interested party can raise an opposition that claims the prior right is infringed.
Well-known trademark protection system clarified
“In 2001, provisions for protecting well-known trademarks are added to the Trademark Law to fulfillChina’s obligations under the international conventions which it has joined. In practice, there exist false assumptions of well-known trademarks as an honorary title, which lead to blind pursuit of well-known trademark identification and even fraud practices,” says Xu Ruibiao, chief of SAIC Trademark Office.
To clarify the well-known trademark protection system, the new Trademark Law follows the principle of “identifying the individual case and providing passive protection”. It clearly provides that the Trademark Office, the Trademark Review and Adjudication Board and the People’s Court shall not take the initiative to apply the provisions of protecting well-known trademarks. Those provisions can only be applied after the relevant party in trademark cases apply for it. It also provides that the identification is only applied to the relevant case.
“To avoid misleading consumers, the new Trademark Law prohibits advertising in the name of well-known trademarks. The wording of ‘wellknown trademark’ shall not be used on goods, their packages and containers, or used for advertising, exhibition and other commercial activities. In case of violation of the above provisions and advertising goods by promoting the trademark as ‘well-known trademark’, the local industrial and commercial administration shall issue a correction order and fine a penalty of 10,000 yuan.” Xu Ruibiao says.
Protection of the exclusive rights of trademark strengthened
Under the current Law, there are trademark infringement cases in which the victim party win the case but pay a high price. A punitive penalty provision is thus added to the new Law , and the amount of the infringement penalty has been lifted. It stipulates that the penalty can be 1 to 3 times the loss that the infringement costs, the benefits accrued from the infringement, or the trademark license fee. The statutory infringement penalty of “under 500,000 yuan” is amended as “under 3,000,000 yuan”, which means that the People’s Court can issue a ruling of fining a penalty under 3,000,000 yuan depending on the severity of the infringement act when it is difficult to determine the loss that the infringement costs, the benefits accrued, or the trademark license fee.
According to Zhang Hui, chief of the SAIC Legislative Office, the new Trademark Law reduces the burden of proof on the trademark holders and adds the provisions of providing documents and papers. When the trademark holder has exhausted his burden of proof and the tort-related documents and papers are in the possession of the infringer, the People’s Court can order the infringer to provide the relevant documents and papers. If the infringer fails to provide the relevant documents and papers, the People’s Court can determine the amount of penalty based on the right owner’s claim and the proof which he provides. “This provision will to some extent alleviate the burden of proof on the right holder, conducive to solving the problem of the compensation claims based on insufficient proof”.
Registration of trademarks held by other parties banned
“There are cases in which some companies or individuals take advantage of their special relationship with the trademark prior owner and make malicious registration. For example, the infringer could make preemptive registration of an trademark of the other party which he learn that the trademark has not been registered yet during negotiating a contract with the other party, which brings about serious damage to the trademark prior owner and is not conducive to creating a fair and competitive market environment.” According to Wang Qing, the acts mentioned above is prohibited by the new Trademark Law.
By Wang Qing, some people take others’ famous brands as their own company name and conduct unfair competition. The new Law stipulates that the act of using others’ registered or unregistered trademark as his company’s name , misleading consumers and constituting acts of unfair competition shall be dealt with by the provisions of the Law on Unfair Competition.
Trademark agency activities standardized
“Some trademark agencies violate the principle of good faith, by using its business advantage, helps his clients to make malicious trademark registration, and even make malicious registration of others’ trademark on their own.” Xu Ruibiao said. The new Law clearly stipulates that a trademark agency shall follow the principle of good faith to comply with the laws and administrative regulations to conduct business and shall bear the confidential liability.
The new law also provides that a trademark agency shall give a clear notice to his client if the trademark registration application is not in conformity with the Trademark Law. A trademark agency shall not accept the consignment if he knows or should know that his client’s application is malicious registration of others’ trademark or infringe upon others’ prior rights.
“Under the new Trademark Law, liability shall be investigated if a trademark agency is found in violation of the Trademark Law and his act will be kept on record by the industrial and commercial administration. In case of severe violations, the Trademark Bureau and the Trademark Review and Adjudication Board may decide to stop the relevant agency’s business and make a public announcement.” Xu Ruibiao says. (People’s Daily)
Customers purchase soft drinks at a supermarket in Xinjiang county,ShanxiProvinceon August 30, 2013.CFP