China

New Implementing Rules of the Trade Mark Law

Following the enactment of the New Trade Mark Law on 27 October 2001, the State Council of the People’s Republic of China amended the Implementing Rules of the Trade Mark Law on 3 August 2002 and the New Rules will take effect on 15 September 2002. Some of the more significant changes brought by the New Rules are set out below.

1.      Well-known mark

In the course of an application for registration or an adjudication of a trade mark dispute, if a party claims that his mark is a well-known mark and uses it as a ground to oppose a pending application or to cancel an existing registration, he may apply either to the Trade Mark Office or the Trademark Review and Adjudication Board, depending on the nature of the process, for adjudication and confirmation that his mark is a well-known mark.

If a well-known mark is registered by a third party as the name of an enterprise, causing possible deception and misrepresentation to the public, then the owner of the well-known mark may apply to the authority in charge of enterprise name registration to cancel that enterprise name registration.

2.      Changes of the Applicant’s particulars in the course of a trade mark application

The applicant is permitted under the new Rules to change its name, its address, its agent and to amend the specification of the goods by way of deletion during the process of a pending application.

Assignment of a pending application is also permitted under the new Rules.

3.      Examination of trade mark applications with regard to Goods

The approval of an application for registration may be granted in respect of only certain goods included in the specification and the notice to advertise will be issued in respect of the approved goods only. It therefore means that if only certain goods in the application are objectionable, the application can still proceed by agreeing to restrict the specification to the approved goods.

Moreover, after an application is approved and advertised, the applicant may apply to abandon certain goods in the specification but the application with the amended specification will have to be re-advertised.

4. Trade mark opposition and cancellation

An opposition may be directed to only certain goods of the application. If the opposition is granted, the opposed goods will have to be deleted from the application and the application will have to be re-advertised.

Similarly, a cancellation action may be directed to only certain goods of the registration. If the cancellation is successful, those goods in respect of which no evidence of use is submitted will have to be cancelled from the registration. The cancellation decision will be published by the Trade Mark Office.

5.      Penalty for Infringement

Heavier fines are provided under the new Rules. The amount of the fine shall be no more than 3 times the unlawful gains from infringement. If the amount of the unlawful gains cannot be ascertained, the amount of the fine shall be no more than Rmb 100,000.