Tai Guo

Significantly, a single color still cannot be registered as an independent trademark; and further, only around 100 colors that can be recognized by human being can be used as components of a trademark. From the NPC’s point of view, allowing a single color to be an independent trademark is improper because it may cause trademark monopoly.

(b) Explication of the time schedule for trademark administrative processes The current Trademark Law of PRC does not expressly impose time schedule for certain trademark administrative procedures, such as application for trademark registration, trademark opposition, trademark cancellation dispute, etc.

In the Amendment, the legislator demonstrates the following time schedule for acceleration and regulation of trademark administrative procedures.

(c) Improvement of trademark application process Simplifying the application process is one of the main purposes of the Amendment. Under the current law, applicants need to file trademark applications separately if he or she wants to register one trademark in different classes of goods or services. Article 22 of the Amendment allows “Multiple-class Application,” which means an applicant may apply for trademark registration in multiple different classes within one application. Hopefully, this amendment will not only reduce the workload of trademark examiners, but also save prosecution costs for applicants.

In addition, according to the current law, there is no remedial measure before a final refusal of the trademark application is issued. Instead, applicants need to appeal to the Trademark Review and Adjudication Board (the TRAB) if he or she does not accept this final refusal. In order to offer an alternative to this time-consuming appeal process, Article 29 of the Amendment provides an official written comments system. Under this system, if the CTO considers the certain content of the application needs to be modified, they shall inform the applicant accordingly and the applicant has an opportunity of amending the application within 30 days of receipt of the official notice.

Furthermore, Article 21 (2) of the Amendment stipulates that filing documents and related information can be submitted in writing, such as electronic format or other formats prescribed by the trademark office. Thus, it appears that the Chinese Trademark Office will introduce an e-filing system for trademark applications, which are currently not available under the present trademark law.

(d) Elimination of potential bad faith opposition According to the current Trademark Law, anyone has the right to file an opposition against a trademark application within three months after the preliminary publication. In practice, it provides opportunities for the abuse of the system because the opponent who has no proper standings is able to file an opposition.

In order to eliminate such situation, Article 33 of the Amendment stipulates that only those who own certain prior rights or who is an interested party can initiate the opposition proceedings in a process based on the relative prohibited ground.

2. Trademark protection (a) Protection for unregistered trademarks against bad faith registration Article 15 of the Amendment provides protection for owners of unregistered trademarks against “bad faith” registrations of other parties on the following conditions: a) The bad faith application concerns a mark that is identical or similar to the unregistered trademarks for identical or similar goods; and b) the applicant is aware of the existence of the unregistered trademark that is already used in China through contractual, business, geographical or other relations with the owner of the unregistered trademark.

This change is considered a significant improvement of the protection of unregistered trademarks in addition to the protection offered by the Act against Unfair Competition.

(b) Extension of the protection scope against registration of trademark as a business name At present, if the owner of a well-known trademark believes that another person has registered its well-known trademark as a business name which would mislead the public, an application, can be initiated for cancellation of the registration of the business name.

According to Article 58 of the Amendment, the scope of protection shall extend to the owners of registered trademarks that are not recognized as “well-known” trademarks. The infringer’s behavior shall be dealt with under Anti-unfair Competition Law of PRC accordingly.

(c) Recognition of the well-known trademark in case-by-case base Article 14 of the Amendment stipulates that the determination of well-known trademark shall be only made based on the necessity of a specific case. That is to say, it only provides passive protection for the well-known trademark.