2 March, 2013
Legal News & Analysis – Asia Pacific – China – Intellectual Property
On December 28, 2012, the 30th session of the Standing Committee of the 11th National People’s Congress reviewed the Amendments of Trademark Law (Draft) (the “Draft“), which was published on the same day for soliciting public comments. The deadline for submitting comments was January 31, 2013.
The Draft adds a provision on trademark opposition and stipulates that in the event of an application for registration of a trademark which is identical or similar to a trademark used by another person in an earlier time on the same or similar goods, if the applicant has a contractual, business contact or any other relationship (other than agency or representation relationship) with such other person and thus is clearly aware of the existence of such other person’s trademark and if such other person opposes the registration, the trademark shall not be registered. As to whether a trademark must be recognized as a well-known trademark, the Draft states that it shall, upon the request of concerned parties, be determined as a fact when the issue is essential to decide a specific case involving the trademark. The Draft also protects the fair competition market order. For example, it stipulates that where a party uses another person’s well-known trademark or registered trademark as a trade name in its enterprise name, which misleads the public and constitutes an unfair competition, it shall be handled in accordance with the Law of the People’s Republic of China against Unfair Competition. In addition, the Draft strengthens the protection of an exclusive right to use trademarks, adopts punitive damages for malicious infringement on an exclusive right to use trademarks where serious circumstances are involved, and increases the maximum amount for statutory damages that a people’s court may determine under certain circumstances for infringement of an exclusive right to use trademarks.
The full Chinese text of the Draft is available here.
Veronica Lockyer, Orrick
Yan Zeng, Orrick