In Part I of this series, posted here, we reported on certain amendments to Trade Mark Law of the People’s Republic of China. In this article, we continue outlining some of the other important amendments.
Voluntary cancellations now carry a one-year re-filing bar
Where a trade mark is voluntarily cancelled, neither the original registrant nor any third party may apply to register an identical or similar mark on the same goods or services for one year from the date of cancellation. Brand owners planning portfolio re-structuring, brand refreshes, or any strategy involving voluntary cancellation with a view to re-filing must factor this restriction into their timelines.
The non-use defence in damages proceedings is clarified
A defendant in trade mark infringement proceedings may raise a rights holder’s failure to use the mark as a defence to a claim for compensation. The three-year non-use period relevant to this defence is now expressly anchored to the period beginning immediately before the infringement occurred, rather than the date of proceedings. Rights holders bringing damages claims must therefore be able to demonstrate genuine use of the mark in three years preceding the infringement.
Courts may sanction abusive trade mark litigation
A new provision now empowers courts to impose sanctions where trade mark proceedings are brought through malicious collusion with another party or through the unilateral fabrication of the basic facts of a case, with civil damages payable to the innocent party where loss results.
Further changes worth noting
Use of a trade mark on e-commerce platforms, social media, and other online channels is now expressly recognised under the law as trade mark use, both for the purpose of resisting non-use cancellation and with regard to infringing acts. When it comes to infringement damages, the revised law places the infringer’s gains on an equal footing with the rights holder’s actual loss as co-equal primary methods for calculating damages, rather than treating the infringer’s gains as a fallback available only where actual loss is difficult to establish. The revised law further empowers the China National Intellectual Property Administration (CNIPA) to cancel, on its own initiative, registered trade marks that have become generic names for the goods or services they cover, or on the basis of non-use. Further, the new law also permits CNIPA to issue a formal confirmation of a mark’s well-known status in China, providing Chinese trade mark owners with official documentary evidence for use in relation to trade mark prosecution in foreign jurisdictions
The revised law takes effect from 1 January 2027 with implementing regulations yet to be published. Brand owners with exposure to the PRC market should review their watching arrangements, consider any non-traditional marks that may represent their business, audit existing filing programmes for bad faith risk, and ensure that online trade mark use is systematically documented before the law commences operation. The amendments discussed should provide useful guidance to Chinese trade mark law applicants, as well as promoting the responsible and lawful filing for trade marks in China.