China’s National People’s Congress Amends The Chinese Trademark Law

by Perkins Coie

China’s National People’s Congress enacted the third amendment to the trademark law on August 30, 2013, and it will come into force on May 1, 2014.  The amended trademark law appears to be a significant improvement on the past version of the trademark law as it potentially reduces trademark squatting, potentially significantly improves the amount of damages available, imposes time limits on the Chinese Trademark Office (CTMO) and Trademark Review and Adjudication Board (TRAB), and allows for sound marks and potentially other types of marks. 

Some of the key changes include:


As many foreign companies can attest to, squatting (bad faith trademark registration) is a problem in China.  The amended trademark law may decrease the prevalence of squatting.  

Specifically, Article 7 now requires applications for registrations to be in good faith. Further, Article 15 prevents registrations of a first party’s unregistered mark by a second party having a relationship with the first party. This will hopefully prevent the situation where a distributor registers a supplier’s mark or a contract manufacturer registers a designer’s unregistered mark.  Thirdly, Article 64 prevents the awarding of damages if the registered mark at issue has not been used by the plaintiff.  However, this could backfire if judges grant injunctions since damages are not available.  Finally, non-use cancellations must be decided within nine months, which is a significant improvement over current cancellation timelines.  Nonetheless, hiring a trademark watch service is highly recommended so oppositions can be filed timely to prevent registration.


Statutory damages will be increased to 3 million RMB (about $490,000) from only 500,000 RMB (about $81,000).  Statutory damages are available when it is difficult to prove actual damages, which is a common occurrence since discovery has been generally unavailable in China.

However, if a plaintiff in a trademark infringement action provides all available evidence, the People’s Court can now order a defendant to produce their accounting data for determining damages.  Whether Chinese courts will actually do this in practice is unknown since the law does not require the courts to order defendants to produce.  Further, the penalties under the trademark law for failing to produce or producing false evidence are only that the People’s Court may reference plaintiff’s evidence when making a damages determination.

Punitive damages, up to treble damages, are available when infringement occurs in bad faith.  As in the current trademark law, the plaintiff can also recover the reasonable cost of stopping the infringement.

Time Limits

For the first time, the amended trademark law places time limits on the actions of the CTMO and TRAB. The main time limits are nine months for preliminary examination for registration; nine months for rejection appeals, cancellations based on generic names or three-year non-use cancellations, and other actions; and 12 months for oppositions and other actions.  Extensions may be available under special circumstances.  While preliminary examination tends to be fast in China, other CTMO and TRAB actions tend to be slower.  These time limits may significantly increase their speed.

Sound Marks and Other Nontraditional Marks

Article 8 of the amended trademark law specifically recites that sounds can be registered.  However, it is unclear in what manner a sound trademark can be registered, e.g., via musical notes, a written description of the trademark, a recording of the mark, etc.  Most likely, this will be clarified when the implementing regulations are released, presumably sometime in 2014 before the amended trademark law comes into force.

Article 8 also removes the requirement that the mark be visual.  While other nonvisual marks besides sounds were not specifically mentioned in Article 8, it may be possible to register other types of nontraditional marks including motions, scents, tastes, etc.

Finally, Article 8 retains the term “combination of colors” implying that single colors, e.g., Owens-Corning’s trademark for the color pink for insulation products, may not be registrable.

Additional Changes to Note

The amended trademark law allows for multiclass registrations for the first time by removing the requirement of one application per class.  This should streamline the application process.

Administrative enforcement of trademark infringement has also been strengthened to allow for the enforcement of trademark rights via the Administration of Industry and Commerce (AIC) instead of the court system.  Administrative enforcement may be preferred when the amount of damages may be small, when damages may be unavailable, and/or when speed is required as AIC proceedings tend to be much quicker than court proceedings.  Under the amended trademark law, AIC-imposed fines can now be up to five times the unjustified business income. Further, the AIC is entitled to seize and/or destroy “primary tools” instead of just “specially used tools” used in the manufacture of infringing goods.

While the amended trademark law appears to be quite an improvement for foreign applicants, we will need to wait to see the implementing regulations and how courts and the AIC handle infringement in practice to make such a determination.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Perkins Coie | Attorney Advertising

Written by:

Perkins Coie

Perkins Coie on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.