Reflections on the 4th Revision of Trademark Law
Du Ying
Professor of Law School of Central University of Finance and Economics
A few relations need to be adjusted
While the above substantive and procedural issues need to be resolved, the following relations also need to be adjusted.
1.Based on China’s status quo in relation to learning from other countries good experiences
As previously stated, the 4th revision of the Trademark Law will ultimately address China’s needs to resolve practical problems, but it does not mean to reject in the revision process good practices and experiences from other countries, which will be overall evaluated in conjunction with the background system in the learning process. For example, in restructuring trademark use scheme, full consideration will be given to the limit of American practice. The United States adopts a unitary first-to-use scheme, which grounds the right on use, rather than on registration.8 For this reason, in borrowing from the rules, careful analysis must be made on the coupling relations.
2.Relations between guaranteeing quality and increasing efficiency
In the 3rd revision of the Trademark Law, t i m e l y requ i rement o f examination was added, mandating time limit for new applications to be 9 months without extension; all decisions by the Trademark Office on cancellation of registration, TRAB rejection on review, invalidation of absolute grounds, and withdrawal on review must be made within 9 months, or no more than 12 months.
For more complicated cases on relative grounds, it is no more than 18 months. In October 2017, the Trademark Office shortened the examination cycle from 9 months to 8, and further to 6 months by 2018. Under the circumstances of shortened examination cycles and continuous increase of applications, procedural reforms for this revision is of vital importance.
3.Relations between trademark examination authorities, review and adjudication authorities, and the judicial authorities
China practices dual scheme of IP protection in which, as administrative authorities for IP, the Trademark Office plays an important role in prosecuting and enforcing trademark rights. The ultimate trademark issues rest with the TRAB whose decisions will still be reviewable by courts. Therefore, trademark registration examination relates to three authorities of Trademark Office, the TRAB, and the court. The 3rd revision simplified the opposition scheme, channeling what could have been dealt with by the opposition proceedings to invalidation process resulting in increased invalidity review cases giving further pressure to the TRAB for responding to review lawsuits, as well as pressure to the courts for handling administrative trademark registration cases. Whether examination on relative grounds should be canceled, and how to lay out opposition proceedings must be carefully studied to balance the above triangular relations.
4.Relations of Trademark Law and other IP laws, the Unfair Competition Law, and other laws on civil affairs
On the substantive side, the Trademark Law, the copyright law, and the Patent Law are all stand-alone legislations for IPRs with shared commonalities as intrinsic attributes, and with provision importing in the application process of the laws as, e.g., in the conflict process of rights, consideration needs to be given to the provisions of other stand-alone laws. Procedurally, both trademark and patent prosecutions relate to divided responsibilities and cooperation between the administrative authorities and judicial authorities. Therefore, coordination is needed between the revision of the Trademark Law and the designs and rule contents of other stand-alone IP laws. The pending problems of the newly revised Unfair Competition Law also need to be considered.
Currently, the Civil Code is being compiled. From the macro perspective, whether and how IP [sic] should be codified need further exploration.9 From the perspective of systematic importing and rule designing, how civil code recognition of rights and interest should be reflected in the Trademark Law? When the Trademark Law gives insufficient provisions, whether it could be supplemented by civil liabilities? At the moment, the Supreme People’s Court (SPC) provides a solution of giving no protection in specific cases for trademark squatters by misusing their trademark rights. Can civil liabilities for compensatory damages be imposed, as a further step, on bad faith squatters and bad faith opposition requesters? These all need to be considered.
Additional comments
In the age of digital economy, further achievements could be made by using the new technology such as big data and AI to increase efficiency in trademark registration examination, and to strengthen trademark protection, promoting brand building. Therefore, promoting AI and digitization in trademark registration, protection and services is also within consideration for the Trademark Law revision. Meanwhile, this revision coupled with institutional implementation. Previously, protection of geographic indication are the responsibilities of three separate departments, which were respectively, the General Administration of Quality Supervision, Inspection and Quarantine (GAQSIQ), Ministry of Agriculture, and the premerger Trademark Office, which led to confusion of right holders, inconsistency in application and enforcement proceedings, and different legal nature and effects. After the institutional reform, the Trademark Office and GAQSIQ have been merged into State General Administration for Market Supervision so that the Trademark Law may, upon consideration, play some role in coordinating protection of geographic indication.
（Translated by Zheng Xiaojun)
Photo from: 669pic.com
References:
1. DU Ying, Social Progress and Trademark Views: the Past, Present and Future of Trademark Regime [M], Beijing: Peking University Press, 2012.
2. Trademark Law of United States [M], Translation by DU Ying, Beijing: Intellectual Property Press, 2013.
3. Trademark Law of Germany: German Laws Protecting Trademarks and Other Indicia [M], Translation by FAN Changjun, Beijing, Intellectual Property Press, 2013.
4. France: Intellectual Property Code (Law Part) [M], Translation by HUANG Hui and ZHU Zhigang, proof-read by ZHENG Chengsi, Beijing, Commercial Press, 2017.
1 See, Trademark Office Public Notice for Comments on Trademark Law Revision, at http://www.ctmo.gov.cn/tzgg/201804/t20180402_273481.html, last visited July 22, 2018.
2 Wu Handong, Balance of Advantages and Disadvantages: A Scientific Analysis of the Policies for Intellectual Property Regime, Journal of Legal Studies [J], 2006 (5): 6
3 5.748 Million Trademark Applications Filed in China, a 50% Increase from the Year Before, at http://www.chinanews.com/cj/2018/01-18/8427846.shtml, last visited July 22, 2018.
4 ZHANF Yumin, A Study of Trademark Registration and Securing of Right Procedure: In Pursuit of Balance of Efficiency and Justice [M], Beijing, Intellectual Property Right Press, 2016, 59-61.
5 DU Ying, The Law of Trademarks [M]. Beijing: Peking University Press, 2016: 76.
6 See, Supreme People’s Court exemplary case No. 82: WANG Suiyong v. Shenzhen Ellassay Fashion Co.
7 LIU Yun, WANG Hua, Revisit to the Trademark Opposition Scheme Speaking about the Private rights, Beijing University of Posts and Telecommunications (Social Science Ed.) [J], 2015(17):
35-40.
8 LI Mingde, American Intellectual Property Law [M], Beijing: Law Press, 2014: 531.
9 DU Ying, Consideration on the “Codification” of Intellectual Property, Northen Legal Studies [J], 2018 (3): 21-29.
