(English) Chinese trademark law on the verge of change!!!
(English) Chinese trademark law on the verge of change!!!
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By Eric SCHAHL
A new bill on trademarks was published on 1st January and remained open for public comment until 31st January.
What are the major changes expected?
A) The acceptance of sound trademarks
This marks the inclusion of jingles in the category of distinctive signs and should lead to high level of caution when running advertising campaigns.
B) Good faith will be required of agents
Unfortunately, good faith only applies to agents, not to applicants. This can however be a hindrance to well-known trademarks counterfeiters who require the services of a lawyer for their applications.
C) The rejection of an opposition will immediately enable the applicant to claim his registered mark
This measure is a significant one because to date, one had to wait for a case of trademark registration to be won against an opposition before being able to claim ownership of a registered trademark and then proceed with counterfeit action. Since registration process could take many months, this measure is aimed at preventing counterfeiters from filing oppositions for the sole purpose of stalling the registration of legitimate trademark.
D) It will be possible to request the withdrawal of new generic names
A new type of fraud seems to have surfaced whereby certain economic players are exploiting their trademark rights for the purpose of financial gain.
E) The prior user of a non-registered sign will be able to keep using the sign despite the rights of a subsequent trademark owner.
The goal here is to protect those who exploit a sign in good faith without having registered it. It is a new and surprising loophole in the Chinese system of “first come first serve”, which has prevailed until now.
F) The fact that a defending party does not publish their accounts will be viewed as unfavourable in court.
This is where the plot thickens because presently, a plaintiff is quite powerless when coming up against an abusively reticent counterfeiter.
G) The State Administration of Industry and Commerce (SAIC) will be able to suspend its seizures if the respective mark is under review (due to an on-going court procedure or invalidation action).
This new development is critical in defending against SAIC raids. It remains to be seen whether counterfeiters and usurpers from all sides will also try to exploit it.
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