9 April 2014

New Trade Mark Law in China

On 1 May 2014 the Trade Mark Laws in China are changing.

This is good news for the owners of Well Known Marks not protected in China because owners of marks with an international reputation should be able to prevent or attack registration of their brands by so-called Trade Mark Squatters in China even if they have been unable to acquire registered rights in China, perhaps because of existing rights owned by Squatters.

Also, for the first time, the concept of bad faith will be recognised in China so that owners of marks without an international reputation may be able to prevent or attack registration of their brands by Squatters provided they can show that the application for registration was made in bad faith.  It is not yet clear how compelling the evidence of bad faith will need to be, but we think this change in the law will be good news for non-Chinese trade mark owners.

Sadly, the thorny issue of whether use for export purposes only in China constitutes trade mark infringement has not been resolved.  The Courts in China have issued conflicting decisions on whether use for export purposes only is infringing use, but with the introduction of the concept of bad faith, it may be possible to argue that even if the use is infringing, the registration being infringed was applied for in bad faith and should be cancelled.

A word of warning for trade mark rights owners: there will be no right of appeal for an Opponent against an adverse opposition decision, so it will be more important than ever to ensure that all evidence is filed to support an opposition at an early stage in the proceedings.