Since its implementation on 1st March, 1983, the current Trademark Law of China has been revised for four times in 1993, 2001, 2013 and 2019. On 13th January 2023, the China National Intellectual Property Administration (CNIPA) released the Draft Amendment to the Trademark Law of the People’s Republic of China for public comment which ended on 27th February 2023.

The proposed changes focus mainly on tackling bad faith filings, emphasising the use requirement and streamlining the trademark procedures. Some of the key changes in the Draft include the following:

Tackling bad-faith trademark applications

The Article 4 of the current trademark law revised in 2019 stipulates that “malicious trademark applications not for the purpose of use shall be rejected”.

In the Draft Amendment, a new article, i.e. Article 22, is added which covers five specific situations of trademark applications that would be considered as bad faith, including:

1. Filing a large number of trademark applications are not for the purpose of use, disrupting the order of trademark registration;
2. Filing trademark applications by deception or other improper means;
3. Filing a trademark application that is harmful to national interests, social public interests, or has other major negative effects;
4. Violating the provisions of Articles 18 (protecting well-known trademark), 19 (pre-emptive registration by agents or representatives), and 23 (prior rights) of the Draft Amendments, intentionally damaging the lawful rights or interests of others, or seeking illegitimate interests; and,
5. Filing a trademark application in other malicious ways

To combat malicious trademark applications, the Draft introduces Mandatory Transfer (Ariticle 45, 46, 47). Under certain circumstances, the successful applicant of an invalidation procedure against a registered trademark may request the mandatory transfer of the ownership of the applied trademark to his own name when the registration was applied in bad faith.

Those who apply for bad-faith trademark registrations would also need to bear penalities:

• Article 67 stipulates that those who apply for trademark registration in bad faith will be given a warning or a fine of up to RMB 50,000 (EUR 6,766). In serious cases, a fine of RMB 50,000 to RMB 250,000 (EUR 33,830) may be imposed.
• • Article 83, which is new, stipulates that if a person violates Article 22, Item 4 of the Draft and applies for trademark registration in bad faith and causes losses to others, the other person may bring a lawsuit to the people’s court to claim compensation for the losses. The amount of compensation shall at least include the reasonable expenses paid by the other party to stop the malicious application for trademark registration. Where, in violation of Article 22, Item 3 of the Draft, a malicious application for trademark registration damages national interests, social public interests, or causes major adverse effects, the procuratorate shall file a lawsuit in the people’s court for the malicious application for trademark registration in accordance with the law.

Prohibiting repeated trademark applications

Article 14 of the Draft stipulates that unless otherwise specified, the same applicant can only register one identical trademark for the same product or service.” At the same time, Article 21 further clarifies the situation that repeated applications are not allowed, that is, ‘the trademark applied for registration shall not be applied for, registered, or canceled, revoked, or declared invalid within one year before the date of application for the same product as the applicant. same trademark’.

This is similar to the practice in Spain. if the trademark applications are identical to the registered trademarks and protect identical products and they are from the same applicant (trademark holders), it is considered DUPLICITY of trademarks. The trademark applicaitons will be rejected.

Strengthening the obligation to use trademarks

The Draft introduces significant changes to emphasis on the obligation of trade mark use throughout the trademark life circle. First, when applying for a trademark, it is necessary to explain the use or intended use of the trademark (Article 5). Later on, once a trademark is registered, a declaration of use shall be submitted to the China Intellectual Property Administration, (‘CNIPA’) within 12 months after every five years from the date of approval and registration of the trademark on the approved goods or the legitimate reasons for not using it(Article 61).

Streamlining the trademark procedure

The opposition period would be shortened from 3 months to 2 months from the date of publication (Article 36).
In Spain, the opposition period is 2 months.

Also, the review procedure, which, under the current law, allows the applicant to request for a review if the opposition is upheld, is completely removed. The applicant would need to file a lawsuit at the court. (Article 39).

Jialin Chen
International Business Development Consultant

Pablo Zuazo Toll-Messia
Lawyer and Consultant International Trademark and Brand Intelligence