Amendments mean trademark protection enters a new era

The year 2013 can be said to have been a year of change in the protection of trademarks in China. The Third Plenum of the 18th Chinese Communist Party Central Committee proposed that “the application and protection of intellectual property is to be strengthened, and the establishment of special intellectual property courts is to be explored”. The Supreme People’s Court, through its publication of model cases, reiterated that it would intensify the protection of intellectual property; and the Standing Committee of the National People’s Congress adopted the Bill for Amending the Trademark Law for the Third Time, and amended the complementary Implementing Regulations for the Trademark Law and the Rules for the Review and Adjudication of Trademarks.

Enhanced protection

In recent years, cases of the pre-emptive registration of trademarks in bad faith have cropped up repeatedly. The purpose of such pre-emptive registration is to seek gains by virtue of pre-emptively registering another’s trademark, a typical violation of the principle of good faith.

Before the amendment, although the Trademark Law prohibited the pre-emptive registration of trademarks by agents and representatives, the definition of “agents” and “representatives” was excessively narrow and infringers could easily circumvent this prohibition.

Therefore, the amended version adds the good faith provision, “if someone is well aware of another’s trademark through a contractual, business or other such relationship, but nevertheless proceeds to preemptively register the same, and if a third party that has made prior use thereof files an objection with the Trademark Office in respect of the pre-emptive registration by the applicant, the Trademark Office may directly refuse registration in accordance with the law”. This will help in cracking down on pre-emptive registrations where the infringer was well aware of the other’s trademark as a result of economic dealings, etc.