SAIC issues revised draft of trademark law amendments

On June 20 2009, the State Administration for Industry and Commerce (SAIC) issued a revised draft of the proposed amendments to the PRC Trademark Law (??????????) for comment by selected agencies and bodies which will be affected by such changes, including trademark owners. Compared with the last draft circulated for comment in August 2007, the new draft has incorporated the following significant features:

• It has maintained the broadened scope of registrable trademarks to include colour marks and non-visual marks such as sounds, smells and motion marks (Article 8). However, the new draft provisions dealing with the expanded categories of registrable marks provides that the examination and registration procedures will be dealt with in regulations to be separately promulgated by the SAIC (Article 78);
• The new draft no longer requires the Chinese Trade Mark Office (CTMO) to complete the examination of trademark within 12 months of the filing date of the same (which was found in the last draft);
• It has retained the need for the CTMO to substantively examine a trademark application for refusal on the basis of relative grounds (Article 9). By contrast, the last draft proposed to remove this requirement, which would have placed a significant burden on trademark owners to actively watch for and oppose confusingly similar marks.
• The new draft, like the last draft, has maintained the proposal on allowing multi-class applications;
• The new draft restricts the entitlement to file trademark oppositions and invalidation actions to parties holding prior trademarks or geographical indications that may be relied upon in such opposition and invalidation actions, similar to what was proposed in the last draft; (These improved measures are targetted at reducing the number of vexatious and frivolous requests for opposition and invalidation.)
• Also, the new draft is consistent with the last draft on the issue of increasing the quantum of the maximum amount of statutory damages for infringement from Rmb500,000 (US$73,170) to Rmb1 million (Article 68).
  
  

Meanwhile, the trademark community is awaiting, with much anticipation, the finalisation of the third amendments to the Trademark Law, which would significantly impact their brand protection (including filing) strategies, going forward.

Ai-Leen Lim, head, IP portfolio management Asia (Bird & Bird IP (Beijing) Co, Ltd)