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Important changes to Chinese trade mark laws
In May 2014, China will be implementing important changes to its trade mark laws. This is the first in a series of posts about these changes.
The new trade mark laws that will introduce some changes to the way trade mark applications are processed. The changes intend to streamline procedures, increase efficiency and take steps towards minimising piracy.
Once the new laws are implemented, applicants will be able to file multi-class applications – that is a single application that claims goods and services in multiple classes. This is already possible in many other jurisdictions (including Australia) and saves the need to submit multiple applications for the one trade mark where a broad range of goods or services are being claimed.
The new laws will allow applications to be ‘split’ – similar to the divisional application process in Australia. Where only part of an application is refused, this allows the non-controversial part to continue to registration while the problematic part is quarantined and dealt with separately.
The Chinese Trademarks Office (CTO) will also be able to seek clarification from applicants in a more informal way. The CTO will be empowered to deal directly with the applicant in order to seek clarification rather than simply issuing a notice of refusal if there are issues with an application. This should allow some applications to be dealt with more expeditiously.
There are several other key administrative and procedural changes that are going to impact the application process. The PRC government has mandated a reduced time frame for the CTO to consider applications. The effect of this will be two-pronged: it will decrease the turn around time before applicants learn of the outcome of their application but it will also provide a narrowed window of opportunity to file evidence in support or in opposition to an application. Applicants will need to be thoroughly prepared before filing with the CTO and able to respond quickly to official actions.
Good faith requirement
What is perhaps the most important change to be implemented in the application phase is the strict enforcement of the ‘good faith’ element. Historically, there has been no strict requirement that a trade mark application be filed in good faith (and conversely no strict prohibition against bad faith applications where an applicant files a mark for ulterior purposes or to hijack an existing brand). The new laws move to remedy this by expressly requiring applications to be made in good faith. Further, they seek to punish not just individual applicants who breach the good faith element but also any agencies filing on behalf of others who knowingly act in bad faith.
Did you know
Markwell has partnered with specialist intellectual property law firms in China (Beijing, Shanghai and Hong Kong) to ensure that clients who have manufacturing or sales operations in China receive the highest quality advice and representation.
Contact us if you would like more information on trade marks and brand protection in China.
Photo credit: Andi Braun
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