Changing times for trademark protection

——Mr.Huang Hui

In the past 18 months China's IP stakeholders have witnessed a number of significant developments. In 2009 China implemented its national IP strategy and took important steps in amending its trademark legislation. The State Administration of Industry and Commerce (SAIC) and the Supreme Court separately promulgated a number of trademark-related regulations and interpretations, detailing rules on the registration of trademarks and their administrative and judicial protection. The key legislative developments were as follows:

In late 2009 the SAIC submitted the third draft of the Trademark Law amendments to the State Council for further review. The corresponding modification of the implementing rules is also underway.

In a bid to reach international standards, the SAIC's five-year plan for 2008 to 2012 aims to (i) perfect China's system of examining trademarks at registration, and (ii) make trademark examination more efficient. The first objective is to complete the examination of 1.4 million trademark applications in 2010. Ultimately, the aim is to shorten the trademark examination period to one year. It is hoped that the plan will reduce the lengthy backlog of trademark cases awaiting review and adjudication. The plan also seeks to improve the success rate of trademark examinations to 99% on a spot-check basis and to keep the case success rate above 85% in administrative litigation.

In April 2009 the SAIC promulgated the Working Specifications on the Recognition of Well-Known Trademarks. This guidance elaborates on the processes and requirements for recognizing trademarks as well known.

In a prompt response to the global financial crisis, in April 2009 the Supreme Court issued Several Opinions on IP-related Trials. The opinion provides stronger and broader protection for trademarks that are recognized as distinctive and well known. The opinion also clarifies that prominent use of an enterprise name which infringes prior trademark rights constitutes trademark infringement; use that is not prominent, but could cause consumer confusion, will be dealt with under unfair competition legislation. In January 2009 the Supreme Court amended the jurisdiction rule in relation to trademark trials, specifying that only courts in main cities or other specifically designated locations have jurisdiction over cases relating to well-known trademarks.

Echoing the April 2009 opinion, the Supreme Court issued the Judicial Interpretation on Well-Known Trademarks in 2009. The interpretation strictly prohibits the dilution and tarnishing of well-known trademarks. It also provides that in certain circumstances, the use of an enterprise name on goods is prohibited if the name is similar or identical to a well-known registered trademark, even if the goods in question are dissimilar

China has continued to intensify its border protection strategy. In March 2010 the IP Rights Customs Protection Rule was further modified following its amendment in 2009. Except under certain conditions, removing a label bearing an infringing trademark will not be sufficient to allow imported counterfeit goods to enter the Chinese market. The General Administration of Customs is scheduling a review and upgrade of its IP records system in an attempt to facilitate the registration, management and searching of IP-related data.