In January of this year, the China National Intellectual Property Administration (CNIPA) published its draft 5th Amendment to the Chinese Trademark Law (a translated version is posted here).
The proposed amendments would overhaul significant portions of the current law, including imposing new remedies to address bad faith trademark filings, instituting use requirements to maintain registrations, and implementing changes intended to streamline the examination process. The public consultation period ended in February 2023, with industry groups such as the International Trademark Association (INTA) submitting comments. The draft amendment will likely undergo additional rounds of review and revisions, and is expected to be submitted to the National People’s Congress (NPC) within the next two years.
The proposed amendments have the potential to bring relief to Chinese rights owners, addressing pain points relating to continued bad faith filings, convoluted examination timelines, and other inefficiencies in obtaining and enforcing rights in the increasingly critical Chinese market. Some of the proposed amendments include:
- New mechanism for compulsory transfer of trademarks registered in bad faith to the rightful owners.
- Introduction of a use requirement (or justification of non-use) to maintain trademark registrations.
- New civil remedies and enhanced administrative penalties against bad faith filings.
- Restrictions on trademark re-filings.
- Expedited examination of post grant applications – for change of name/address, assignments, renewals, etc.
Needless to say, some of the proposals in the current draft would significantly improve the ability of rights owners to protect and enforce their brands in China. We are continuing to monitor and update our clients on the progress of the draft amendments, and welcome any questions our clients may have about how these proposed changes could affect their trademarks. Please tune into to MarkIt to Market for future updates.
This article appeared in the April 2023 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.