Implementing Regulations of the Trademark Law

The revised Trademark Law of P. R. China became effective as of 1st December 2001. Accordingly, its Implementing Regulations are now amended and will come into force as of 15th September 2002. The following are the key changes.

1. Well-known trademark status. According to Rule 5 of the Implementing Regulations, the Trademark Office (TMO) and the Trademark Review and Adjudication Board (TRAB) may recognize the well-known status of a trademark, at the request of an interested party, in the course of trademark registration and/or review procedure. When recognizing the well-known status of a trademark, Article 14 of the Trademark Law shall apply. This empowers TMO and TRAB to recognize well-known status for the first time in the registration and/or review procedure.
2. Pending trademark application assignable. According to Rule 17, applicant of a pending application may assign the application and the Trademark Office shall accept the recordation of the pending application assignment. Change of name or address can now also be recorded against pending applications. TMO used not to accept recordation for assignment and change of name or address against pending applications.
3. Partial refusal. A national trademark application now may be refused for part of the claimed goods while the rest may proceed (Rule 21). TMO had a partial refusal policy, but it was only applicable to international registrations extended to China through Madrid Agreement or Madrid Protocol.
4. Opposition or cancellation against part of the goods/services. Opposition or cancellation can be filed against part of the goods or services of an application or registration, according to Rule 23 and Rule 41.
5. Deadline for filing supplementary submissions. In case supplementary submissions to TMO or TRAB during an opposition or review procedure are to be filed, it shall be declared first in the first submission, and the supplementary submissions shall be filed within three months after the filing of the first submission (Rule 22 and Rule 32).
6. Open hearing. An interested party may request an open hearing in a review procedure and the TRAB may decide ex officio whether an open hearing is necessary in such a procedure. If an applicant of a review fails to participate in an open hearing, the TRAB shall deem that the application has been abandoned (Rule 33).
7. Shorter term for a registrant to furnish use evidence. In case a third party initiates a non-use cancellation action, the trademark registrant will have two months to furnish use evidence (Rule 39). The previous rules allowed a term of three months to provide use evidence by the registrant.
8. Thirty- day term for responding to official actions dealing with formality matters. According to Rule 17, the term for replying to official actions dealing with formality matters including classification and specification of goods and/or services is now extended from 15 days to 30 days.