China’s State Council Considering Public Suggestions to First Draft of Amended Trademark Law Implementation Regulations

(Paul Kossof, RIPL Articles Editor)

The initial public draft of the amended Regulations for the Implementation of the Trademark Law (“Implementation Regulations Draft”) was released in January, and China’s State Council accepted suggestions until February 10, 2014. China’s Trademark Office and the State Council are currently drafting the second draft, and will release it shortly in order to meet the May 1 deadline for the proposed effective date for the implementation regulations.

There are two main reasons why the State Council decided to amend the Implementation Regulations:

• The Third Revision of the Trademark Law (“2013 Trademark Law”) will take effect on May 1, 2014. The Implementation Regulations Draft has been written to support the implementation of the 2013 Trademark Law.
• Some of the articles in the current Implementation Regulations do not coincide with contemporary practice. The new draft removes outdated and contradictory language.

This article introduces some of the most important changes in the Implementation Regulations Draft.

The Implementation Regulations Draft provides the factors for determining whether trademarks or their associated goods and services are similar:

• Similar Trademarks: Font, pronunciation, meaning, graphics, and color; combinations of these elements; and the overall similarity of the trademarks’ shape, color combinations or sound. (Article 23)
• Similar Goods: Function, use, production, sales channels, and consumers. (Article 22)
• Similar Services: Purpose, content, methods, and overall similarity of the services. (Article 22)

The 2013 Trademark Law allows the registration of sound marks. The Implementation Regulations Draft outlines the requirements for sound trademark applications such as that the application must include musical notes, and that an application for a sound associated with a Chinese ethnic group must include an explanation of the sound’s meaning. (Article 13)

Parties that wish to engage in a trademark transfer must apply to the CTMO. The potential recipient will enjoy the rights to the trademark after the transfer is approved and the recipient makes a public announcement. (Article 34)

The draft also provides measures for enforcing the various trademark agency restrictions in the 2013 Trademark Law. (Article 5). It restates that anyone may apply for the revocation of a trademark after three years of non-use. (Article 71)

Trademark applicants will only have fifteen days to correct a trademark application after receiving written notice from the CTMO. (Article 18)

The time to answer a third-party objection to a trademark application has also been reduced from three months to thirty days. (Article 29)

Lastly, the Implementation Regulations Draft also states that applicants cannot file identical or similar applications to applications already denied by the CTMO. (Article 65)

The author anticipates that the amendment process for the Implementation Regulations will be relatively short, and that most of the revisions in the Implementation Regulations Draft will survive into the final amended version.

The official announcement and Implementation Regulations Draft can be found here.