China’s newly amended trademark law has been in effect for about a month now. Has the new law made things better? Here are some of our early observations.
1. Have the filing requirements become stricter? With the new trademark law, the China Trademark Office (CTMO) requires filing of original powers of attorney and trademark application forms. Accompanying these documents and also required are documents proving the valid existence of the applicant company, such as a company incorporation certificate (a copy of the certificate suffices). This requirement to file original papers with the CTMO extends beyond new applications to include oppositions and non-use cancellations filed with the CTMO. At this time, the Trademark Review and Adjudication Board (TRAB) has not adopted the same practice and continues to accept copied documents such as powers of attorney and review submissions. It is not clear if these practices (for both the CTMO and TRAB) will change.
2. Can I e-file? The new trademark law provides for e-filing but, in reality, e-filing is not yet an option for foreign companies. The CTMO is only accepting e-filings from domestic Chinese companies at this stage. More importantly, the system only accepts standard goods items. One wonders how useful the e-filing mechanism is in reality.
3. In a multi-class filing, can my application be split? Uncertainties abound around this question. The new law only allows an application to be split in the event of an objection on goods items from the CTMO. This takes away a lot of flexibility that earlier drafts of the law would have provided. For example, based on the current law and implementing regulations, it appears one cannot split a multi-class application if someone files an opposition against only one of the classes. This would effectively mean the application for all the classes will be kept at bay pending completion of the opposition procedure, even if some of the classes were not challenged. It is also not clear if a split can be made when a registrant tries to assign one registration in a multi-class registration.
4. Has my trademark become generic? The new law provides a new ground to invalidate a registered trademark: if the trademark has become generic. The registered owner will then have two months to file a response.
5. Have I recorded my trademark license? The new law expressly provides that failure to record a trademark license means the license cannot be enforced against a third party acting in good faith. Recordal can now be filed at any time while the license agreement is valid. Further, only the prescribed details of the parties and the scope and duration of the license are required to be recorded. It is no longer necessary to file the actual license agreement with the CTMO.
The new trademark law has only been in force for one month, so we have yet to see its full effect. It brings many positive changes, yet clearly certain practical issues need to be addressed. We will continue monitoring the law’s progress.