The China National Intellectual Property Administration (CNIPA) published its draft for the 5th Amendment to the Chinese Trademark Law (Draft Amendment) on 13 January 2023. The trademark law was amended four times since 1993, 2001, 2013 and 2019. With the in-depth development of the socialist market economy, the awareness of intellectual property has increased, and more attention has been paid to brand building and creating huge demands on trademarks, meanwhile, this raises a series of problems. The China trademark system has been suffering from large amounts of bad faith filings and numerous amounts of marks that are not used in commerce, which this new draft aim to tackle these issues directly. This proposed draft mainly focus on three aspects: (1) curbing bad faith filings, (2) emphasizing the use requirement and (3) prohibition of duplicate applications.

Curbing bad faith filings

To more effectively combating bad faith filing, the Draft Amendment introduces a new article of what will be considered as bad faith:

1. With the intention to obtain others’ legitimate rights or interests or benefits by copying, imitation or translation of well-known trademarks.
2. Improperly registering trademarks that have been used by others and have certain influence.
3. Agents and representatives maliciously register trademarks of their represented person.
4. Malicious registration of trademarks by other improper means.

To prevent bad faith filings, the right owners may request a compulsory transfer of the infringing registrations to the holder while filing the invalidation applications. Moreover, the right owners may also file lawsuits to recover the losses caused by bad faith trademark applications. The Draft Amendment states that the bad faith trademark applicants shall face a maximum fine of RMB250,000 under serious circumstances.

Emphasizing the use requirement

A new mechanism now requires the trademark registrant to submit evidence of use to the CNIPA within twelve months after the expiration of every five years from the date of approval of registration of the mark, or provide legitimate reason for non-use. If no explanation is given within the time limit, the CNIPA will notify the registrant requiring them to respond within six months from the date of issue. If the registrant failed to respond within the time limit again, their registration will be cancelled.

This would likely to help removing trademarks filed by bad faith hoarders as they are not intended to use their marks in commerce. Meanwhile, it is advisable for the right owners to docket date evidence of use of their mark regularly to meet the new use requirements.


Prohibition of duplicate applications

The Draft Amendment states that the trademark applied for registration shall not be identical to the prior application, registration or cancelled, revoked or invalidated within one year of the application date on the same goods and/or services. However, there are also exceptions:

1. For the needs of production and operation, the applicant can make minor amendments to the mark that is already in used.
2. The prior registered trademark was abandoned due to the failure to submit the evidence of the use in a timely manner, but the prior mark has been actually used.
3. The prior trademark has been invalidated due to its conflict with another person’s rights or interest, but the rights or interest is no longer exists.
4. Other legitimate reasons for re-filing the mark.

In the meantime, it is unclear whether right owners re-filing their mark due to refusal reviews to keep their pending application in line will be counted as a valid reason under the new regime. Therefore it is recommended to conduct trademark searches before filing an application to avoid possible conflict with the existing mark, to reduce the need of re-filing.

See Also:
China Trademark Registration Procedures and Fees