Increased Trademark Protection in the PRC?

All eyes are on the protection of intellectual property in the PRC as accession to the WTO draws closer. Amendments to the existing Trademark Law are expected to be released soon. Will these proposed revisions do enough to fill the gap in intellectual property protection?

In November 2000, the draft amendments to the PRC Trademark Law (中华人民共和国商标法)(Trademark Law) were reportedly forwarded by the State Council to the Standing Committee of the National People's Congress¹. Although not formally published, the draft sheds some light on the intended reforms. These reforms are mainly aimed at meeting the requirements under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), which the PRC would have to adhere to after its accession to the World Trade Organization (WTO). The promulgation of the amended Trademark Law is expected during the first half of 2001.

CURRENT REGULATIONS

The Trademark Law, effective as of July 1 1983, was supplemented by the PRC Trademark Law Implementing Rules (Implementing Rules) and was revised in a first round of liberalizing reforms in 1993². These regulations now permit service mark and multiple class registrations. The Implementing Rules underwent several changes in 1988³, 1993, 1995⁴, and one minor procedural amendment in 1999.

This basic set of national-level rules is supplemented by various other regulations (see table for details). The State Administration for Industry and Commerce (SAIC) with the Ministry of Foreign Trade and Economic Cooperation (MOFTEC) jointly promulgated the Administration of Trademarks in Foreign Trade Provisions. This regulation encouraged foreign trade operators to register trademarks and to enter into respective license contracts when trading with overseas parties. The PRC Customs Protection of Intellectual Property Regulations and the PRC Customs Protection of Intellectual Property Implementing Procedures introduced additional protection by the Customs Office against cross-border movement of infringing goods. The Recognition and Administration of Well-known Trademarks Tentative Provisions of 1996 were supplemented by the Trademark Office of the State Administration for Industry and Commerce, Several Questions Concerning Applications for the Recognition of Well-known Trademarks Circular in 2000. Basically, these regulations require formal registration of a well-known mark before it can enjoy special protection. A rule explicitly permitting the sub-license of a trademark is contained in the Trademark Licensing Contract Recordal Procedures, promulgated by the Trademark Office under SAIC in 1997. According to a later Notice by the State Administration of Foreign Exchange, license recordal is necessary for foreign exchange royalty payments from the PRC to foreign licensors. Notable increases in counterfeiting cases prompted the issue of the Standing Committee of the National People's Congress, Punishment of the Crime of Passing Off Registered Trademarks Supplementary Provisions and rather recently of the Opinion on Several Issues Concerning the Administrative Enforcement of Trademark Laws. Regulations of a more technical nature include the Administration of Trademark Printing Procedures.