Draft amendments to trademark law revealed

On 2 September, the Legislative Affairs Office of the State Council published a draft amendment to the PRC Trademark Law and invited comment. The draft proposes major changes to the Trademark Law, including strengthening the right of priority, checks on registrations and oppositions made in bad faith, and increases in the administrative penalties for infringement.

Checks on bad faith registration

Article 31 of the current Trademark Law states that “an application for the registration of a trademark may not prejudice the existing right of priority of any third party, nor may improper means be used preemptively to register a third party’s trademark which is already in use and which has a certain degree of influence”. In the draft, the second proposal for article 34 adds “if the applicant, due to a contract, business dealings, geographical relationship or other relationship with such third party, is aware of the existence of the third party’s trademark, registration will be withheld”. This takes into account principles for determining bad faith that have developed in practice.

The draft also makes a breakthrough in the cross-class protection of trademarks with a certain degree of influence. Currently, the Trademark Law only offers this protection to trademarks that are considered “well known”. The second proposal for article 34 in the draft states that “if the trademark for which registration is applied copies a third party’s relatively distinctive trademark having a certain influence that is registered for non-identical or dissimilar goods, and would be likely to result in confusion, registration will be withheld”. This should help put a stop to such preemptive registrations in bad faith.

Wang Yadong is executive partner, and Helen Liu Hezhen, formerly head of the 7th department of the Trademark Office, is an intellectual property adviser at Run Ming Law Office