Trademark Law of the People's Republic of China

AuthorDonna Suchy
Pages247-263
247
CHAPTER 3
Trademark Law of the
People’s Republic of China
Brian Edward Banner, Jessica Xu, and Drew Foerster
“The sanctity of property is the basic prerequisite of
economic enterprise, since incentive can have no meaning until
society makes it possible for property to be held securely.
—Edmond Burke
The Trademark Law of the People’s Republic of China (PRC) was first
adopted in 1982 and has been amended three times, first in 1993, then in
2001, and most recently in 2013 with an effective date of May 1, 2014. On
that same day, the PRC promulgated a revision to the implementing regula-
tions for the Trademark Law to accompany the new law itself. The new law
wholly and clearly revokes the 1963 Trademark Administration Regulations
but permits all other prior trademark regulations to remain effective as long
as they are not inconsistent with the new law. The 2003 Regulations on the
Verification and Protection of Well-Known Trademarks is one set of such
prior regulations.
In general, the most recent revision of this law responds to public con-
cerns about complex trademark prosecution procedures, the rampant prob-
lem with bad faith trademark squatters, and difficult trademark protection
issues unresolved by the prior law. Efficiency, protection, and enforcement
measures are three key themes in the most recent revision. This chapter first
Brian Edward Banner is an adjunct professor at The George Mason University School of
Law, Arlington, Virginia. Jessica Xu is an associate at Jones Day Intellectual Property Agency
(Beijing) Co., Ltd., Beijing, PRC. Drew Foerster is at the Law Office ofDrewFoerster in Seat-
tle, Washington. This chapter was reviewed by Professor Arthur Yuan of The John Marshall
Law School of Chicago, Illinois, and David Serras Pereira, Gastão Cunha Ferreira, Lisbon,
Portugal.
suc51204_03_c03_247-264.indd 247 6/1/15 8:47 AM
248 IP Protection in China
profiles significant changes to the PRC’s trademark regime and then runs
through significant aspects of the new law while contrasting them with the
corresponding aspects of U.S. law where relevant.
A. Signicant Changes to PRC Law
Some significant changes to the most recent revision compared to earlier
versions of the law include the following:
Article 7 was added, which states that PRC trademarks shall be
registered and used in accordance with the principles of honesty
and credibility.
Sound marks were added to the list of types of marks that qualify
for registration (Article 8). This list had already contained visu-
ally perceptible signs, words, devices, letters, numerals, three-
dimensional signs, combinations of colors (consisting of more
than two colors), and combinations thereof. Single colors and
smell marks subject to potential registration in the United States
still do not qualify for registration in the PRC.
A provision was added prohibiting the registration of marks that
mislead the public about either the geographic place of origin of
the goods or the quality or other features of the goods (Article 10).
Provisions were added that aimed to clarify the existing circum-
stances and venues for recognizing and enforcing a “well-known”
mark, including enabling trademark owners to petition for such
status as part of the initial application (Article 14).
A provision was added to further clarify that the true trademark
owner has the right to oppose registration of a mark or for the first
time seek to invalidate a knockoff manufacturer’s or branded product
distributor’s bad faith registration of the trademark (Article 15) or a
similar mark the true trademark owner has previously used but has
not as yet registered (Article 32). This tactic, known as “brand squat-
ting,” is a recognized and growing problem in the Chinese market.
Obligations and responsibilities were added for the Trademark
Office to foster and enforce good faith on private sector trademark
agents and to enforce penalties for unethical behavior (Article 19).
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