China’s Trademark Law Amendment Considered Less Impressive

The Legal Affairs Office of the State Council published its revised version to the draft amendment of Trademark Law on September 2, 2011 to solicit comments and opinions from the general public. Compared with the draft revision released in 2010, the revised draft is less impressive to brand owners. 

In terms of the protection of well-known trademarks, the draft revision does not change anything from the existing law, where a registration of a well-known trademark is still a prerequisite for dilution protection.  

With regard to the recognition of a well-known trademark, the draft revision specifies that the recognition is made by request of the parties at dispute, and during trademark administrative appeals and civil litigation procedures.  

Preemptive registration of other’s trademarks will be prohibited.  However, the restriction is limited to trademarks that have been in use and have “a certain influence” in China.  

Parties to initiate a trademark opposition proceeding are limited to prior right owners or interested parties.  While the opposed party whose trademark is cancelled by an opposition proceeding can appeal its case all the way to the People’s courts, an unsuccessful opposition can only be appealed to the Trademark Review and Adjudication Board (TRAB).  Litigation remedy appealed from the TRAB is no longer available for the opposing party; instead, the opposing party needs to file with the TRAB a new invalidation proceeding against the mark it wishes to challenge.