Application of New Trademark Law in Transition Period
The new PRC Trademark Law came into force on 1 May 2014. In order to avoid ambiguity and prevent disputes during the transition the transition from the old to the new system, the State Administration for Industry and Commerce of the People’s Republic of China (“SAIC”) recently released a notice on relevant enforcement issues:
1.Trademark registration
a) From 1 May 2014 onwards, when the China Trademark Office (CTMO) makes administrative decisions concerning applications for trademark registration, opposition, change, transfer, extension, revocation, cancellation, license record, etc. submitted to the CTO before 1 May 2014, the new Trademark Law shall apply. However, exceptions still exist such as examination of the opponent’s right as principal and reasons for opposition (i.e. the previous Trademark Law shall apply in these situations).
b) Regarding applications for trademark registration, opposition and revocation submitted to the CTMO before 1 May 2014, the review period shall be calculated from 1 May 2014. However, in case the interval between the opposed trademark’s preliminary publication date and 1 May 2014 is less than three (3) months, the review period shall be calculated from the expiration of the publication period.
2.Trademark review
a) Regarding reexamination applications which concern the CTMO's rejection of an application for trademark registration and which is submitted to the Trademark Appeal Board (“TRAB”) before 1 May 2014, where the TRAB reviews it after 1 May 2014 then the new Trademark Law shall apply.
b) Regarding reexamination applications that concern the CTMO's adjudication of oppositions and which are submitted to the Board before 1 May 2014, if the TRAB reviews them after 1 May 2014, then the party’s right as principal to raise an opposition and request for reexamination shall refer to the previous Trademark Law, while other procedural and substantial issues shall refer to the new Trademark Law.
c) Regarding reexamination applications that concern disputes and the revocation of registered trademarks which have been submitted to the Board before 1 May 2014, if the Board reviews these after 1 May 2014, for substantial issues shall reference shall be made to the previous Trademark Law, while procedural issues shall be governed by the new Trademark Law.
d) Regarding applications for trademark review submitted to the Board before 1 May 2014,the review period shall be calculated from 1 May 2014.
3.Trademark supervision and administration
a) In case the illegal act happens before 1 May 2014,the previous Trademark Law shall apply; in case the illegal act happens before 1 May 2014 and lasts beyond 1 May 2014, the new Trademark Law shall apply.
b) Regarding use of “well-known trademark” on products, product packaging or containers, or in advertising, exhibition and other commercial activities, the new Trademark Law shall apply, except if the products, product packaging or containers with the well-known trademark enter into circulation before 1 May 2014.
Regarding the use of well-known trademarks on products, product packaging or containers, the owner of such well-known trademark shall take relevant liabilities. The administration for industry and commerce (“the AIC”) at the owner’s domicile shall be in charge of relevant investigations into abuse. In case another AIC discovers abuse, the case shall be transferred to the AIC at the owner’s domicile. In case the owner’s domicile is not in China or disputes concerning jurisdiction arise, the AIC appointed by the SAIC shall take charge.