Introduction to the 2013 China Trademark Law, Part I

(By Zhan Yi) On August 30, 2013, the Standing Committee of the National People’s Congress promulgated the Decisions of the Standing Committee of the National People’s Congress Concerning Alterations to the Trademark Law of the People’s Republic of China, which shall be implemented on May 1, 2014. Our website has already translated the Full text of 2013 China Trademark Law in a previous post, and compiled and provided a comparative version highlighting the differences between the 2001 Trademark Law and 2013 Trademark Law. Starting with today’s post, we will introduce and discuss the most important revisions and changes found in the 2013 Trademark Law. In today’s post, we will introduce the first part.

Part I   Sound Trademark: a New Form of Trademark

Our website once posted an article titled, “Can Sound or Smell be registered as Trademarks in China”. Intel’s computer television advertisements always played a concise and well-known sound. This sound, owned by Intel, was registered as a sound trademark in the United States, but not in China. The reason why it was not registered in China as a sound trademark was because, at the time, Chinese laws did not protect or recognize trademarks in sounds. With the promulgation of the new Trademark Law, this will change, and such sound trademarks will benefit from the same protections other forms of trademark receive.

The 2013 Trademark Law stipulates that an application may be made to register as a trademark any mark, including any word, device, any letter of the alphabet, any number, three-dimensional symbol, color combination and sound, or any combination thereof, that identifies and distinguishes the goods of a natural person, legal person, or other organization from those of others.

Certainly, not all sounds can be registered as a trademark. For example, a sound made to register as a trademark may not be identical with or similar to the national anthem, or military anthems of the People’s Republic of China. As another example, considering the fact that a sound made to register as a trademark should carry a certain distinctiveness, in accordance with China’s new Trademark Law, and should be able to remind the person hearing it that the source of the sound is the producer of goods in question, it can be easily concluded that Intel’s television advertisements and its distinctive sound therein possesses precisely the distinctive characteristics required for trademark registration. Keep in mind, this sound trademark may not conflict with any previous intellectual property rights, such as copyright, the right of performer, or the right of producers of audio and/or video recordings. Therefore, with regard to a sound, previously protected by the copyright law, subsequently registered as a sound trademark, generally, under such circumstances, the author of the said sound shall authorize an enterprise to do so with prior permission.

Part II   Registration: Procedural Time Limits

As elsewhere, China has established its own trademark registration system, based upon the principle of first application. However, in practice, the former registration procedure was considered too cumbersome and time consuming.

2013 Trademark Law improves the relevant time limits on trademark registration, but fails to stipulate the time limits assigned to trademark renewal, assignment and modification.

(i) Time limit for Examination of a Trademark Application

The 2013 Trademark Law stipulates: “where a trademark application complies with this trademark law, the Trademark Office shall complete its examination within nine months from the time of its acceptance of the application”. The results of an examination have two possibilities: one is the preliminarily examination, with publication, and the other is refusing an application without publication.

Possibility 1 Preliminarily Examination: Approving Application with Publication

Any person may, within three months from the date of publication, file to oppose a trademark application that has been published after a preliminarily examination and approval. When no opposition is filed after a period of three months, the application shall be approved for registration, and the mark shall be published. Therefore, the total amount of time from initial application to approval is roughly one year.

Competitors and related persons may file to oppose a trademark application within three months from the date of publication. Any holder of prior rights, or an interested party may, or any other person may, under some certain circumstances, in violation of the provisions of the Trademark Law, file to oppose a trademark application that has been published after a preliminary examination and approval.

Following this, the opposition procedure begins. In accordance with the 2013 Trademark Law, the time limit for opposition procedure is twelve months from the date of publication. The Trademark Office shall make a decision whether or not to approve the application for the registration within the twelve month period from the date of publication. If an extension is needed, upon the approval of the Department of Industry and Commerce Administration under the State Council, the time limit can be extended a further six months.

The Results of the Opposition Procedure:

A. If the Trademark Office makes a decision to approve an application for registration, a certificate of registration shall be issued, and the mark shall be published. This represents a significant revision in the 2013 Trademark Law. Because the former trademark law stipulates that, if the Trademark Office makes a decision to approve an application for registration, the opposing party may apply in writing to the Trademark Review and Adjudication Board for a review, and, if still dissatisfied with the decision, file an administrative suit with the courts. In this case, the time required for obtaining a certificate of registration for a trademark applicant is far too long. However, in the 2013 Trademark Law, the trademark applicant may directly be issued a certificate of registration following the opposition procedure. As for the trademark applicant, such a result may be a good one.

The opposing party, if dissatisfied, may file a request for invalidation of the registered trademark in accordance with the 2013 Trademark Law. This is a new procedure, and one that we will introduce and discuss later.

B. Where the Trademark Office makes a decision not to approve an application for registration, the trademark applicant, if dissatisfied with the decision, may file its dissatisfaction. In accordance with the 2013 Trademark Law, the trademark applicant may file its dissatisfaction within fifteen days from the receipt of notification to the Trademark Review and Adjudication Board for further review. The time limit for the Trademark Review and Adjudication Boards further review is twelve months from the acceptance of the application. Upon the approval of the Department of Industry and Commerce Administration under the State Council, the time limit can be extended for another six months. The trademark applicant, if dissatisfied with the results of the review, may file an administrative suit within thirty days from receiving the reviewing decision.

Possibility 2 Refusal of an Application without Publication

If the trademark applicant is dissatisfied with the board’s decision, it may apply for review to the Trademark Review and Adjudication Board. The time limit for the review shall be nine months from its acceptance of the review application. Upon approval of the Department of Industry and Commerce Administration under the State Council, the time limit can be extended for three months. If the trademark applicant is dissatisfied with the decision for review, it may file an administrative suit within thirty days from receiving the reviewing decision.

(ii) Invalidation Procedure and Time limit for Trademark Application

This is a rather new system of procedure in the Trademark Law. According to this system, as for a registered trademark, the Trademark Office, or the Trademark Review and Adjudication Board, may make a ruling to invalidate a registered trademark in violation of relevant provisions of the 2013 Trademark Law.

Parties who refuse to accept a decision may apply for review of the decision within fifteen days after receiving it. The time limit for the Trademark Review and Adjudication Board’s review procedure is nine months from its acceptance of the application. Upon the approval of the Department of Industry and Commerce Administration under the State Council, the time limit can be extended for a further three months. The parties, if not satisfied with the review decision of the Trademark Review and Adjudication Board, can file an administrative suit within 30 days after receiving the review decision.

If the Trademark Review and Adjudication Board is asked to make a ruling to invalidate such a registered trademark, the time limit for an absolute invalidity procedure of trademark is the same period as that mentioned above. The time limit for the relevant invalidity procedure of trademarks is twelve months from the Trademark Review and Adjudication Boards acceptance of the application. Upon the approval of the Department of Industry and Commerce Administration under the State Council, the time limit can be extended for a further six months. The parties, if dissatisfied with the review decision of the Trademark Review and Adjudication Board, can file an administrative suit within thirty days after receiving the review decision.

 

 


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