China is proposing to overhaul its trade mark law, largely in an effort to combat the scourge of bad faith filings.
On 13 January 2023, the China National Intellectual Property Administration (CNIPA) issued the Draft Amendment to the PRC Trademark Law (Draft). The Draft is still under discussion, but if these provisions are implemented, they will result in substantial changes to China’s Trademark Law, which in turn will impact brand protection and management.
Worth noting is that repeated filings will no longer be allowed (Article 14). The Draft proposes that a trade mark application must not be registered for the same mark/goods/services as an earlier application or registration owned by the proprietor. Furthermore, where a trade mark registration has been revoked, cancelled or invalidated, a trade mark application must not be filed within one year for the same mark/goods/services as those covered in the cancelled registration.
Another significant proposal is for trade mark proprietors to submit a Statement of Use and evidence of use (or legitimate reasons for non-use) in the 12 months prior to each 5-year period from the date of registration (Article 61). If no Statement of Use is filed, the CNIPA may require a Declaration to be filed within 6 months. If no Declaration is filed, the registration would be deemed abandoned. According to the Draft, use through information networks such as the Internet would constitute trade mark use (Article 59). It will therefore be very important to maintain records of use of your Trade Marks, in order to be able to make the Declarations, if they become part of Chinese practice.
The Draft is still in consultation stage, and it might not be implemented in its current form. However, since the Draft proposes new restrictions in respect of filing applications for marks already applied for or registered, there are likely to be a significant number of new Chinese applications filed prior to the Draft becoming law, increasing the possibility of earlier rights being cited against later applications. If you are considering new trade mark filings in China, it might be worthwhile doing so in the near future, to try to get ahead of the curve.
