“Trademark Law” (Amendment) will be taken into force from 1st Nov., 2019

On 23rd Apr., 2019, the Tenth Session of the Standing Committee of the 13th National People’s Congress passed a decision to amend the “Trademark Law”, which will be taken into force from 1st Nov., 2019. The amendment is aimed to strengthen the administration on 3 categories of behaviors.

1. Applications for trademark registrations in bad faith

First, Paragraph 1 Article 4 of the “Trademark Law” has added that applications for trademark registrations in bad faith which are not intended for use shall be refused. Such circumstance could be taken as a basis for opposing a third-party trademark and as a basis for invalidating a registered trademark. Such article is aimed to regulate those parties who intend to obtain illegitimate interests by registering trademarks in bad faith.

However, whether this article could be applied to those parties who intend to use the trademark but still register relevant trademarks in bad faith? This might be a bug in this article.

Second, to regulate the trademark agency’s such behavior in bad faith. Article 19 has added the trademark agency’s duty of care, which requires the trademark agency shall review whether the entrusted trademark registration application fails under the circumstances prescribed in Article 4. Article 68 has added the punishment measures to the trademark agency for applying for trademark registrations in bad faith, or filing trademark lawsuits in bad faith.

2. To increase the amount of statutory compensation for the infringement of a registered trademark right in bad faith

The amount of statutory compensation for the infringement of a registered trademark right in bad faith has been increased from 3 million to 5 million. This amendment is aiming to add the infringement cost, punish the party which infringes other’s right in bad faith, and compensate more to the right holder.

3. To add the articles on regulating the counterfeit registered trademarks behaviors

The amended “Trademark Law” has clearly prescribes the measures to deal with the products with counterfeit registered trademarks and the equipment used for the production of those products. Article 63 has added that where a people’s court hears a trademark dispute case, it shall, at the request of the right holder; order the infringer to destroy the products with counterfeit registered trademarks, except for special circumstances; order the infringer to destroy the materials and tools used for the production of products with counterfeit registered trademarks without compensation; or under special circumstances, order the infringer to prohibit said materials and tools from entering commercial channels without compensation. It has also added that products with counterfeit registered trademarks shall not enter commercial channels only after the counterfeit registered trademarks are removed.

Those additional articles take destroy and the prohibition for entering commercial channels as the main measures, which have increased the infringer’s infringement cost by a big margin.