According to the third amendment to the "Decision on Amending the Trademark Law of the People's Republic of China" at the 4th Session of the Standing Committee of the Twelfth National People's Congress on August 30, 2013, the decision will Effective from May 1, 2014. At the same time, the old trademark law is not affected by the new trademark law, and previously registered trademarks can be used normally within the original registration scope.

Differences

1. Add a clause on the principle of good faith

Key points of modification: Article 7 of the new Trademark Law stipulates that “to apply for registration and use of a trademark, one must Follow the principle of good faith.”

Impact: The basic principles that should be followed in civil activities are clearly written into the Trademark Law. The purpose is to advocate that market entities should be honest and trustworthy when engaging in trademark-related activities, and at the same time to combat the increasingly rampant trademark squatting behavior. be regulated. It is foreseeable that this clause will be widely used as a blanket clause in future trademark confirmation and rights protection cases.

2. Preemptive registration of a trademark that is known to have been used by others due to business dealings or other relationships is prohibited

Key points of revision: A second paragraph is added to Article 15 of the new Trademark Law: " A trademark applied for registration for the same kind of goods or similar goods is identical or similar to an unregistered trademark previously used by another person, and the applicant has a contract, business relationship or other relationship with the other person other than those specified in the preceding paragraph and is fully aware of the existence of the other person's trademark. If the other party raises an objection, it will not be registered."

Impact: The purpose of adding this clause is mainly to prevent others from preemptively registering a trademark that has been used previously. This modification further adds to the original provisions. Increasing the protection of used but unregistered trademarks can more effectively curb frequent trademark squatting to a certain extent.

3. Increase the provisions on punitive damages and increase the amount of infringement compensation

Key points of revision: The new Trademark Law introduces a punitive damages system, stipulating that malicious infringement of trademark exclusive rights, If the circumstances are serious, the amount of compensation can be determined within the range of 1 to 3 times the loss suffered by the right holder due to the infringement, the benefits obtained by the infringer due to the infringement, or the registered trademark license fee. At the same time, the new Trademark Law will also increase the upper limit of statutory compensation that the court can decide at its discretion from 500,000 yuan to 3 million yuan when none of the above three grounds can be ascertained.

Impact: The above modifications are mainly aimed at the phenomenon in practice that the cost of rights protection for rights holders is too high, and the benefits of safeguarding rights often outweigh the losses. This revision will play a positive role in safeguarding the legitimate rights and interests of trademark rights holders and combating trademark infringement.

4. Increase the infringer’s burden of proof

Key points of modification: The new Trademark Law stipulates that in trademark infringement litigation, in order to determine the amount of compensation, the people’s court must provide evidence after the right holder has tried his best to provide evidence. If the account books and materials related to the infringement are mainly controlled by the infringer, the infringer may be ordered to provide the account books and materials related to the infringement. If the infringer fails to provide or provides false account books and materials, the people's court may refer to the rights The amount of compensation for infringement is determined based on the person's claims and the evidence provided.

Impact: This move has greatly reduced the burden of proof for trademark rights holders when claiming compensation for infringement, allowing the people's courts to have more legal basis when determining the amount of compensation, and has positive significance in combating trademark infringement.

5. Add provisions on the time limit for trademark registration review and case hearing

Key points of modification: The new Trademark Law stipulates that “for a trademark applied for registration, the Trademark Office shall The review of trademark registration application documents will be completed within nine months from the date of filing." For trademark confirmation cases involving one party, the new Trademark Law increases the trial time limit by 9 months, and for cases involving both parties, the trial time limit is increased by 12 months. If there are special circumstances that require extension, it can be extended by 3 months or 6 months "with the approval of the industrial and commercial administration department of the State Council".

Impact: The above-mentioned new content limits the time limit for trademark registration review and case hearing, which is helpful to greatly improve the current situation where the trademark registration cycle is too long and affects the rights of the parties. At the same time, it enhances the time limit for obtaining trademark rights. Predictability.

6. Strengthen the regulation of trademark agency organizations

Key points of revision: The new "Trademark Law" adds the content that trademark agency organizations should abide by the principle of good faith when engaging in trademark agency business. Trademark agency Industry organizations can punish members who violate industry self-discipline norms and record them in their credit files.

In addition, the new Trademark Law also stipulates that any trademark agency organization or trademark agent that violates the principle of good faith and infringes upon the legitimate interests of the client shall bear civil liability in accordance with the law.

Impact: In recent years, the trademark agency market has been full of chaos and has been criticized. The addition of the above provisions in the Trademark Law will help the trademark agency industry self-regulate and develop soundly. In the future, once the parties find that the trademark agency or agent has any dishonesty or improper means, they can complain and reflect to the industrial and commercial administration department or the trademark agency industry organization. If losses are caused to the parties, they also have the right to rely on the new Trademark Act requires agency organizations to compensate.

7. Add sound trademark

Key points of modification: Article 8 of the new Trademark Law stipulates that sound can be applied for registration as a trademark.

Impact: In the future, common sound logos such as QQ Messenger, Nokia, and Intel, which are well known to consumers, will be able to apply for registration as trademarks.

8. One mark for multiple categories

Key points of revision: Paragraph 2 of Article 22 of the new Trademark Law stipulates that “applicants for trademark registration may apply for multiple trademarks in one application” Application for registration of the same trademark for two categories of goods”

Impact: “One mark for multiple categories” is a major change in my country’s trademark application system to align with international standards. The starting point of setting up this system is to facilitate applicants to apply for registration of the same trademark in multiple categories. The starting point of setting up this system is to facilitate applicants to apply for registration of the same trademark in multiple categories. This is undoubtedly good news for companies with large operations and those that pay attention to protective trademark registration.

9. Modify the objection review system

Key points of the modification: The new Trademark Law stipulates that after the Trademark Office hears trademark objections, if the objection is not established and the trademark is approved for registration, it will directly issue a If the registration certificate is issued, the opponent who is dissatisfied can only request the Trademark Review and Adjudication Board to declare the registered trademark invalid. If the Trademark Office rules that the objection is established and the registration is not allowed, the opposed party can apply to the Trademark Review and Adjudication Board for review.

Impact: The above modifications partially adjust the original objection review system, which reduces the obstacles in the trademark confirmation process for the opposed party and is conducive to the timely obtaining of rights for the opposed trademark; and for objections For a person, if the objection is not established, he will no longer have the right to file an objection review.

Suggestion: As an objector, in addition to fully elaborating the reasons for the objection and organizing corresponding evidence materials during the case objection procedure, you also need to pay greater attention to key objection cases, otherwise Once the opposition is unsuccessful, the opposed trademark will be allowed to be registered and a registration certificate will be issued.

10. Limiting the subject and reasons for objection

Key points of revision: Article 33 of the new Trademark Law will change the subject that has the right to lodge an objection based on relative grounds from the original "any "person" is changed to "the prior right holder or interested party who believes that this trademark registration application infringes upon his or her prior rights." However, the new Trademark Law continues to retain the provision that "any person" can file an objection against a trademark that violates the prohibition and prohibition of registration.

Impact: The modification of this provision can put an end to some malicious opposition applications to a certain extent and prevent others from using the opposition system to deliberately delay trademark registration. However, since the system that "anyone" can file an objection based on absolute grounds continues to be retained, the actual effect of the above modifications will need time to be tested.

Suggestion: As an opponent, if possible, you should try to raise absolute grounds and relative grounds simultaneously as grounds for objection. When filing an objection application based solely on relative grounds, you should pay attention to whether it is "in "Previous right holder or interested party" is the subject category to avoid objections being inadmissible or dismissed due to the subject's ineligibility.

11. Added provisions prohibiting the promotion and use of "well-known trademarks"

Key points of modification: Paragraph 5 of Article 14 of the new "Trademark Law" stipulates that "Producers and operators shall not Anyone who uses the words 'well-known trademark' on goods, product packaging or containers, or in advertising, exhibitions or other commercial activities will be ordered to do so by the local industrial and commercial administration department according to Article 53. Make corrections and be fined 100,000 yuan.”

Impact: “Well-known trademarks” were originally a legal concept to strengthen the protection of higher-profile trademarks, but for a long time, market operators have regarded “well-known trademarks” as An honor is used on a product or promotional event.

The strong market demand for the advertising effect of well-known trademarks has, to a certain extent, contributed to the much-criticized problem of alienation of the well-known trademark system. The new Trademark Law adds prohibitive provisions on the promotion and use of "well-known trademarks", aiming to return "well-known trademarks" to a legal symbol.

Recommendation: For the majority of well-known trademark enterprises, if it involves the use of well-known trademarks as advertising, etc., they need to adjust as soon as possible before the implementation of the new "Trademark Law" and stop promoting and using "well-known trademarks".

12. Introducing the requirement of “likely to cause confusion” in the determination of trademark infringement

Key points of modification: Article 57 of the new Trademark Law replaces Article 52 of the original Trademark Law In the article, the infringement situations of "using a trademark that is the same as or similar to a registered trademark on the same kind of goods or similar goods" are subdivided, and the infringement judgment of "using the same trademark on the same kind of goods" adds "easy". "causing confusion".

Impact: The modification of this article clarifies the requirements for "using a trademark similar to a registered trademark on the same kind of goods", "using a trademark that is the same as a registered trademark on similar goods" and "using similar goods. To determine whether the use of a trademark similar to a registered trademark constitutes infringement, it is necessary to consider whether the applicable requirement of "likely to cause confusion" is met.

Recommendation: As a trademark owner, in future rights protection cases, if you want to obtain the final infringement determination for other people’s trademark use behavior that does not fall into the category of “using the same trademark on the same product”, you need to Be careful not to neglect the discussion and proof that the use of the trademark involved satisfies the requirement of “likely to cause confusion” when explaining the reasons and organizing the evidence materials.

Reference materials

/question/243890866026973444.html