The Revisions of Trademark Law Coming into Force on November 1, 2019

May 30, 2019

On April 23, 2019, the decision of amending the Trademark Law of P.R.C. was approved at the 10th meeting of the Standing Committee of the 13th National People's Congress of China. The revised provisions of the Trademark Law shall come into force on November 1, 2019.

 

Article 4 revised as:

Any natural person, legal person, or other organization in need of obtaining the exclusive right of using a trademark for their goods or services in the course of their manufacturing and business activities shall file an application for the registration of the trademark with the Trademark Office. Any trademark application that is with malicious purpose and not filed for the purpose of use shall be rejected.

 

Article 19, Clause 3 revised as:

Where a trademark agency is or should be aware that the trademark to be registered by the entrusting party shall fall under the circumstances stipulated in Article 4, Article 5 and Article 32 of this Law, it shall not accept the entrustment.

 

Article 33 revised as:

Any prior right holder or interested party, shall they find a trademark application that has been published after the preliminary examination and approval is in violation of the provisions in Clause 2 and 3 of Article 13, Article 15, Clause 1 of Article 16, Article 30, Article 31, Article 32 of this Law; or anyone find it in violation of the provisions of Article 4, Article 10, Article 11, Article 12 and Clause 4 of Article 19,may oppose the trademark application with the Trademark Office, within 3 months from the date of publication. Where no opposition is filed after 3 months, the trademark shall be approved for registration, issued with a certificate of registration, and then published.

 

Article 44 revised as:

If a registered trademark violates the provisions of the Article 4, Article 10, Article 11, Article 12 and Clause 4 of Article 9 of this law, or the registration is obtained by fraudulent means or other improper means, it shall be invalidated by the Trademark Office; any other organization or individual may request for invalidation of the registered trademark with the Trademark Review and Adjudication Board.

 

Article 63, Clause 1 revised as:

The indemnity amount for infringement of exclusive rights to use a trademark shall be determined in accordance with the actual losses borne by the right holder due to the infringement; where it is difficult to determine the actual losses of the right holder, the indemnity amount may be determined in accordance with the gains derived by the infringers; where it is difficult to determine both the actual losses of the right holder and the gains derived by the infringer, the indemnity amount shall be determined reasonably with reference to the multiples of the licensing fee of the trademark. For malicious infringement of the exclusive right to use a trademark, in severe cases, the indemnity amount shall be determined in accordance with the abovementioned means and then multiplied by one to five times. The indemnity amount shall include the responsible expenses incurred for the right holder to curb the infringement.

 

Article 63, Clause 3 revised as:

Where it is difficult to determine the actual losses bourn by the right holder due to infringement, the gains derived by the infringer or the licensing fee of using a registered trademark, the People’s Court shall rule on an indemnity amount of no more than RMB 5 million based on the extent of the infringement.

 

Article 63, Clause 4 (Newly added)

The People’s Court hearing a trademark dispute case shall, at the request of the right holder, order to destroy the goods of the counterfeited registered trademarks, unless under exceptional circumstances; order to destroy the materials and tools for the production of the goods of the counterfeited registered trademark without any compensation; or in some cases, the People’s Court shall prohibit the afore-mentioned materials and tools from entering commercial channels without any compensation.

 

Article 63, Clause 5 (Newly added)

The goods of counterfeited trademark are not permitted to enter commercial channels even after the removal of the counterfeited trademark.

 

Article 68, Item 3 of the acts committed by Trademark Agencies:

(3) In violation of the provisions of Article 4 and Item 4 of Clause 3 of Article 19 of this law.

 

Article 68, Item 4 of the acts committed by Trademark Agencies (newly added):

Those apply for trademark registration with malicious intent are subject to a warning, a fine or other administrative punishment as the case may be; and those maliciously initiate a trademark litigation are subject to the penalty ruled by the People’s Court in accordance with law.

 

(Translated from the original article in Chinese on IPRdaily)

 

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