New Trademark Law is implanting on May 1st. The amendment to the law actively answers social concerns and made major adjustments to current trademark registration and administration system. The adjustments includes that it for a first in the world clearly regulates trademark examination and review time limits, it prohibits the promotions of well known trademarks as an honor, and it also strengthens the protections to trademark exclusive rights.
What will be changed? How to practically implement the new law? Zhang Mao, Minister of SAIC, accepted interviews recently.
Q: The new Trademark Law, for the first, regulates time limits for trademark examinations and reviews. Would therefore the time cost by examinations and reviews be shortened? How to timely finish the examination works?
A: Recently, as the constant increase of trademark applications, China’s trademark examinations and reviews even consumed more than thirty months. SAIC have took various measures to improve efficiencies. Time cost by examinations has controlled within ten months since last year.
The new Trademark Law clearly indicates nine months time limits, which was the first case in the world to regulate time limits in laws. After the adoption of the law, SAIC started to reform work mechanism, to strengthen internal management, to fully deploy examiners activities, and to reasonably adjust examiners. It already controlled examination time limits around nine months currently.
To maintain the legal time limit is a difficult and long term task. China’s trademark applications increased quickly in recent years, 14% increase compared with the previous year. 16% increase in the first quarter compared with the same period of the previous year. Examination workload per examiner in China is more than three times of developed countries such as US and JP. Considering the sharp increase of trademark basic comparison data, the difficulty in examining one trademark currently is equal to that in examining two trademarks in 2008.
Considering the serious situation, SAIC is actively taking strong measures to further improve examination efficiencies. One is to adjust trademark examination and review procedures and work regulations, to simplify opposition procedures therefore to shorten rights determination periods. Second is to improve work mechanism, to strengthen personnel and budget protection, to improve work efficiencies and to safeguard examination qualities. Third is to strengthen information construction and to make efforts for the operation of Trademark Registration and Administration System Phase III in late May and to actively develop intelligent retrieval system for trademark examination and review system.
Q: New Trademark Law allows the registration of sound as a trademark. What kind of sound could be applied and registered? How to prepare relevant materials?
A: To better meet applicants’ multiple necessities, new Trademark Law withdraws the visibility requirement and allows sound to be registered. To suit new Law’s requirement, SAIC has made detailed rules in Regulations for the Implementing of the Trademark Law, and formulated Standards on Sound Mark Acceptance and Examination.
In accordance with the Law, sound mark could be composed by musical sound, such as a song, or non musical sound, such as sound of nature, human or animal. It could also be composed by musical sound and non musical sound together. To be registered, the sound shall have distinctiveness. Therefore as to consumers, they could recognize sound mark during their consuming.
Anyone applies sound as a trademark to register, he shall make a statement in application form and submit the sound sample as requested and explain how to use the trademark. He shall describe the said sound by musical notation or numbered musical notation with explanatory words in the application. Where the said sound could not be described by musical notation or numbered musical notation, it shall be described in words. The trademark description shall be in conformity with the sound sample.
Q: For a long time, “Well Known Mark” has been misread as an honor. To this misreading, new Law clearly prohibits the use of “Well Known Mark” in goods, packaging or utensils, or advertisement promotions. What AIC would do to those goods unsold before May 1st?
A: After the adoption of new Trademark Law, SAIC made timely deployment to require local AIC authorities using interim period to promote and educate local enterprises who having well known trademarks, and to instruct them to accurately understand and normally use their marks. At the same time, SAIC initiated the revision work on Regulations on Well Known Trademark Determination and Protection, and issued Notice on Relevant Issues Concerning the Implementation of Trademark Law Amendment.
Basic principle is as to trademark related illegal actions, those happened before May 1st, apply to old Trademark Law; those happened before that exact day but continued after that exact day, apply to new Trademark Law. Therefore, as to goods labeled with well known trademarks in circulations before May 1st, AIC authorities would not punish them. But where “well known trademark” is labeled on goods, packaging or utensils after that exact day, or used in advertisement, exhibition or other business activities after that exact day, AIC authorities would apply to new Trademark Law and give punishment.
Q: New Trademark clearly identifies and prohibits trademark malicious registration, and increases types of trademark infringing behaviors, sets rules of statute heavier punishment scenarios for infringing behaviors and introduces punitive damages. How will AIC authorities make good use of those new rules and practically strengthen protections on trademark exclusive rights?
A: Just like what you mentioned, new Trademark Law provides important legal supports for AIC authorities in strengthening trademark exclusive rights protection. After the implementation, AIC authorities would serious enforcement according to the law and to comprehensively enhance the main obligation of supervision and enforcement. First is to pay attention to main areas. We would continue maintain the high pressures on trademark infringing behaviors in accordance with the law to investigate and prosecute cases involving multiple regions, with big scales and concerned most by public. Second is to speed up the construction of trademark administrative law enforcement information sharing platform, to promote effective connection between administrative enforcement with judicial procedures, and to improve the efficiency of trademark supervision enforcement and protection standard. Third is to actively promote the publicity of infringing and counterfeiting cases administrative punishments according to the law, and seriously implement the publicity in local departments. Last is to further strengthen the instructions and trainings to local enforcement staff in accordance with new law’s requirements, and to improve their case investigation level.