China making it easier to secure a trade mark registration

Exporters to China wishing to protect their trade mark rights should consider registering their brands in order to stop would be infringers. The good news is that the authorities in China have made further moves to align their laws with western jurisdictions with a third amendment to their trade mark law.

Some of the main points arising from the proposed new amendments are:-

Multi class applications will now be possible

Under the current law, separate applications have to be filed for each class of goods or services thus adding to the overall costs

An applicant can withdraw an application under certain conditions

There was no provision for this before the recent amendment.

Electronic filing of application is proposed

It is not yet known if this will take place via e mail or via an electronic submission vehicle.

Sound and Single-colour marks

The current law only allows protection for visually perceptible trade mark or marks that contain multiple colours. This change to allow non-traditional marks, signals a new opportunity for brand owners to use sound and single colour marks to distinguish their goods and services in one of the world’s largest markets.

Strengthening protection for Foreign and Famous Brands

Trade mark squatting has been a serious issue in China. This is the act of registering another party’s brand name for the purpose of extorting money from the legitimate brand owner or prohibiting the owner from selling products bearing the mark in China.

The scope to protect the owners of "Famous" brands is to be expanded.

Conclusion

Overall, the proposed new provisions will reflect the realities of the way in which trade marks are globally recognised and used. Efficiencies in the process and enforcement of brands in China will hopefully achieved by the changes. Time will tell as to how well the proposed changes will be implemented and interpreted in practice.

Russell Law - November 2011