Author: James Liu

Main Trademark Legislation in China in 2023

1. The Standard for the Circumstances for Suspension of Review cases

2. Pre-filing of administrative litigation cases against review of refusals grant the plaintiff 12 months (not extendable)

3. Measures for the Implementation of the Provisions on the Administration of Enterprise Name Registration

4. Convention on the Abolishment of the Legalization Requirements for Foreign Public Documents will come into effective in China

5. Notice on comprehensively implementing online filing for opposition cases

6. Draft Amendments to Chinese Trademark Law in 2023 

1. On June 13, 2023, the Trademark Office under the CNIPA published the Interpretation on the Standard for the Circumstances for Suspension of Review cases

     The standard stipulates seven clear circumstances that the review case should be suspended and three circumstances that the review case can be suspended depending on the specific circumstances.

I. There are seven types of circumstances that review case should be suspended, which are:

(1) The disputed trademark or the cited trademark is in the process of changing or transferring the name of the registrant, and after the change or transfer, the disputed trademark and the cited trademark no longer have a conflict of rights;

(2) Where the cited trademark has expired and is in the process of renewal or extension period for renewal;

(3) Where the cited trademark is in the process of application for deregistration or withdrawal;

(4) Where the cited trademark has been cancelled, invalidated or not renewed upon expiration, the date of cancellation, invalidation or cancellation at the time of review has not expired for one year;

(5) Where the case involving the cited trademark has reached a conclusion and is waiting for the conclusion to take effect or the execution of the effective judgment which is waiting for re-trial;

(6) The existence or non-existence of prior rights must be based on the outcome of another case being tried by a people's court or being handled by an administrative organ; and

(7) The status of the cited trademark’s rights must be based on the outcome of another case being tried by a people's court or being handled by an administrative organ, and the applicant has explicitly requested suspension of the review;

II. There are three types of circumstances that can be suspended, which are:

(8) Where a request for invalidation of the cited trademark involved in the case of review of rejection has been filed, and the registrant of the cited trademark has been found in other cases to constitute bad faith registration under Article 4, paragraph 4 of Article 19, paragraph 1 of Article 44, etc., the review may be suspended.

(9) Where it is necessary to wait for an earlier ruling or judgment in a case with the same facts or in a related case, the review may be suspended according to the necessities of the case; and

(10) Other circumstances in which the review can be suspended, for the circumstances that cannot be exhausted, based on the principle of necessity and in favor of legitimate rights, taking the above circumstances as reference, the examiner may independently decide whether to suspend the review according to the specific case.

2. On June 21, 2023, the Beijing Intellectual Property Court published the template of Application Form of Pre-filing of litigation cases

     For administrative litigation cases of review of refusals wherein the key cited mark is involved in other pending cases and its status is unstable, the court now allows the plaintiff to apply for pre-filing before the formal filing of the case. The pre-filing can last up to 12 months (not extendable), during which the litigation case will be suspended. The plaintiff can end the pre-filing case at any time after the status of the cited mark is determined, so as to either enter the formal filing or abandon the lawsuit.

3. On August 31, 2023, the State Administration for Market Regulation promulgated the “Measures for the Implementation of the Provisions on the Administration of Enterprise Name Registration”

The new Measures will come into force on October 1, 2023. In addition to further standardizing the registration rules of enterprise names, the new Measures added a special chapter to establish enterprise name dispute arbitration system. When the enterprise finds other enterprise names infringing upon its enterprise name rights, it has the specific procedural and material rules to follow. When the enterprise registration authority reviews disputes over enterprise names, it should comprehensively consider relevant factors in accordance with the law. For enterprise name disputes with clear facts and minor disputes, the simplified arbitration procedure can be applied. This move will greatly facilitate rights holders to safeguard their rights against the allegedly infringing company name.

4. October 23, 2023, Ministry of Foreign Affairs announced China’s accession to the Convention on the Abolishment of the Legalization Requirements for Foreign Public Documents

    The Convention on the Abolishment of the Legalization Requirements for Foreign Public Documents will come into force in China on November 7, 2023. The Convention is an international treaty with the widest scope of application and the largest number of signatories under the framework of the Hague Conference on Private International Law, aiming to simplify the procedures for the cross-border circulation of public documents. Starting from 7 November, official documents sent from China to other Convention contracting parties, no notarization and legalization by the embassies and consulates of China is needed, only an additional certificate (Apostille) as stipulated in the Convention in China will be sufficient. And for official documents of other contracting parties sent to China mainland, only additional certificates of that country are required, and consular legalization of the country and the Chinese embassy or consulate in the country are no longer required.

5. On October 27, 2023, China Trademark Office of the State Intellectual Property Office issued the Notice on comprehensively implementing online filing for opposition cases

     China Trademark Office of the State Intellectual Property Office issued a Notice on comprehensively implementing online filing for opposition cases. From December 1, 2023, trademark agencies handling opposition business should, in principle, submit electronic applications through the trademark online service system, instead of submitting paper materials. And the notice also requires trademark agencies to make preparation for the online filing before December 1, for example, registering an account in the trademark online service system as soon as possible.

     So far, all the trademark matters before the China State Intellectual Property Office can be filed electronically except the review on refusal.

6. Draft Amendments to Chinese Trademark Law in 2023 

On 13 January 2023, the China National Intellectual Property Administration (“CNIPA”) published draft amendments to the PRC Trademark Law for public comments. This is the 5th Amendment to the Law. The PRC Trademark Law first came into effect in 1983 and has experienced four Amendments respectively in 1993, 2001, 2013 and 2019.