PRC AMENDS TRADEMARK LAW

01/01/2002

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Mainland China has passed an amendment to its Trademark Law, which took effect on 1 De-cember 2001.

The main changes are as follows:

Provisions are introduced for the registration and protection of collective marks and certi-fication marks, and it is explicitly provided that if the marks contain geographical indica-tions, but the goods are not from the region indicated, the marks are not legible for regis-tration and its use is prohibited.

The applicants permitted to apply for trade-mark registration are expanded from enter-prises, institutions or individual pro-ducer/trader, to include all natural persons, legal entities or other organizations. Also, two or more applicants may now apply jointly to the Trademark Office to register the same trademark and jointly enjoy and exercise ex-clusive rights in the mark.

The definition of a trademark is broadened to allow the registration of three-dimensional indications and color combinations.

Provisions are introduced to protect well-known marks:

1.If the used of trademark that has been a reproduction, imitation or translation of a well-known mark not registered in China in respect of identical or similar goods, is likely to cause confusion, it may not be registered and used.

2.If the use of trademark that has been a re-production, imitation or translation of a well-known mark registered in China in respect of dissimilar goods, is likely to cause losses to the registrant of the well-known mark, it may not be registered and used.

Exceptions to registration principles

The amended law continues to apply the principle of no protection without registration, and the first-to-file principle. However, some exceptions are introduced. For example, an applicant, who is an agent or representative of the owner of a mark, may not seek to register and use the mark in his own name without the owner's authorization (Article 15); registration of a trademark may not harm the pre-existing interests of others, and an applicant may not preemptively seek to register a trademark that has been used by another and has certain reputation (Article 31).

The basis for claiming priority is broadened. In addition to a foreign application as before, priority may now also be claimed within six months of the date of exhibition where the trademark is first used on goods in an interna-tional exhibition held or recognized by the government.

A suit can now be filed with the court in re-spect of a trademark application, opposition or invalidation action within 30 days after receipt of the review decision.

New provisions are introduced to protect the exclusive rights of a registered trademark. For example:

1.When a trademark is infringed, the regis-trant of the trademark or an interested party may choose whether to seek remedies through the administrative authority for industry and commerce, or to directly file a suit with the court.

2.Sale of infringing goods constitutes trademark infringement regardless of whether the seller is aware of the in-fringement.

3.The administrative authority for industry and commerce are empowered to order the immediate cessation of infringing acts, to confiscate and destroy infringing goods and the equipment used for their manu-facture, and to impose fines.

4.Before filing a suit, a trademark registrant or interested party may request the court to order an infringer to cease the infringing acts in question, and may take steps to preserve evidence and property.

5.Reasonable expenses incurred by the plaintiff in order to halt infringing actions may be recovered as part of damages. If the damages cannot be determined, the court may award statutory damages up to RMB500,000, according to the circum-stances of the infringement.