Focusing on amendment of Trademark Law

The third draft amendment of Trademark Law has been being discussed since 2005, after publishing the first version for the third draft amendment of Trademark Law with 159 articles in it in 2006; the state trademark bureau provided another version with 150 articles in August of 2007. And now, the second version is under discussion over the whole country.

Combining the phylogeny and the reality of the Trademark Law in China, we can know that, this law is becoming more and more comprehensive in respect of the subject of the registration, the scope of the constitution of the trademark and so on; In addition, what we can also see is that the power of administrative enforcement of the Administration Bureau for Industry and Commerce is strengthened step by step. From the amended version (2007), we can summarize three main respects being discussed:
1. To change a lot or change a little;
2. The goal of legislation for the trademark law;
3. The concrete system of the law.

1. About the extent to change
Although some scholars suggest that the trademark law should be changed a lot to avoid later troubles in amending, from the view point of the nature of the trademark law, this kind of way which means once and for all is not practicable. The trademark law, in essence, is closely combined with the commerce which is changing every minute, and therefore needs supplements all the time. So, for its better enforcement, the trademark law should focus on the problems in existence, and it's not a good idea to draw a final conclusion on the amended version before its drafting or after its publication.
             
2. About the goal of the legislation
Compared with the present trademark laws, the new amended version has made progress as it expressed in words that the administration function of the trademark is behind of the function of benefits protection for mandator. But it is not enough. The new version of the trademark law should embody not only in form, but also in content that, the goal of the trademark law is to protect the benefits both of the consumer and the proprietor of the trademark. Only in this way, we can say that the trademark law fits its nature as a private law; only in this way, we can say that this new version is making greater progress than ever.

3. About the concrete system
In respect of the law system, the main purpose of the amendment of the trademark law is to solve the serious problems in two fields. One is the malicious act in the registration of the trademark, opposition, dispute, and the use of the trademark; the other is to advance the efficiency of the affirmation of the trademark.

(1) About malignant register and opposition
Although there are two withdraw provisions in the amendment (2001) about the register of the trademark with malignant act, the principle of good faith has not yet been set up as a guiding spirit. The main reasons are as following: First, it is hard to decide whether the conditions stipulated in the law is reached; second, there are almost no punishment for the malicious act in register. That is to say, the cost of breaking the law is less than the benefits, which to some extent "encourages"  the bad behavior in register. This phenomenon should be changed and the under discussion amended version of the trademark law should impose more strict restriction and liability on the offender.

(2)About simplifying procedures and advancing confirming rights efficiency
To some extent, how to simplify and advance efficiency is the most important issue in the amendment of the trademark law this time. It is also the issue to which most attention is paid by the organ of the trademark. The aforesaid procedures which need to simplify include the examining of the application, opposition and review procedures. 
At present, it needs 3 to 4 years to get registered from the time of submitting the application. And as for the cases of the opposition and review of the trademark, the situation is even more serious. If this situation can not be solved fundamentally, it will not only do harm to the economic life, but also hinder the realization of the fair. In my opinion, the most efficiency way to solve the problems is to simplify the procedures.

First, simplify the examining procedure of the application for register. We may examine the absolute condition only, and do not need to examine the relative for purpose of saving time. As for the relative condition, it can be solved by the owner of the trademark and the prior applicant through the opposition procedure.

Second, simplify the opposition procedure.? to restrict the qualification of the opponent. That is, only the prior applicant and the owner of the geographic indications are entitled to institute an opposition. ? the organ which can accept and hear the trademark oppositions should be the Trademark Review and Appraisal Board, no longer the Trademark Bureau. People who can not accept the results given by the Trademark Review and Appraisal Board can submit to the court directly, and in this way, administrative procedures are reduced. ? to introduce the summary procedure. If the Trademark Review and Appraisal Board considers the oppositions are not established, it can rule directly. In case it considers the opposition is established wholly or partly, it should inform the applicant to reply. ? to cancel the regulation that a judicial review could be revoked upon the decision for a non-admissible opposition

All above are just a few opinions about the amendment of the Trademark Law. There is still a long way for us to achieve final success. Or perhaps final success is always on way, which we can only get close unlimitedly but can never achieve. Notwithstanding that, we all hope the new trademark law can give us more convenience both in register and protecting legal rights.

source:Sino-Link Consulting