China’s State Council has recently issued for public comment a Circular with the published revisions to the country’s Trade Mark law. This will be the third change to date for China’s Trade Mark law.
Among the salient points of the proposed changes are revised remedies against counterfeiting, includ- ing new measures for the award of damages through the act of counterfeiting. Article 67 of the draft amendment (now Article 56) deals with cases in which it is impossible to calculate precisely the losses sustained and the benefits derived, by plaintiff and defendant respectfully. In such cases it is proposed the maximum applicable penalty be raised from ¥500,000 to ¥1,000,000.
Under the current Trademark Law, in a successful infringement case, the trial court must consider which of the following two methods should be used to assess damages:
(i) losses sustained by the plaintiff;(ii) profits derived by the defendant from infringing activities. In a judicial interpretation dating from 2002, the Supreme People’s Court interpreted this provision as meaning that the plaintiff has a right to choose one of these two assessing methods for use in trademark infringement cases.
One of the inadequacies of the current law is that it provides that any interested person be able to file a complaint with CTMO (the China Trademark Office). In practice, this provision has resulted in many oppositions filed for the sole purpose of hindering the applicant in obtaining a Trade Mark’s Certificate of Registration. To remedy this situation, the draft amendment redefines the authorized person as one “who is in possession of prior rights to the brand”.
With many major institutions in the field such as the International Chamber of Commerce, the Eu- ropean Union Chamber of Commerce in China and the US-China Business Council (CBC) having already published their comments expressing appreciation for the solutions proposed, the published draft also suggests that the Chinese government is prepared to make more significant changes to the Chinese Trademark Law than previously with the First and Second Amendments.
This article is intended solely for informational purposes and does not constitute legal advice. Although the information in this article was obtained from reliable official sources, no guarantee is made with regard to its accuracy and completeness. For more information please visit dandreapartners.com or WeChat: dandreapartners.
