Measures for the Administration of the Engagement in Trademark Agency Business by Law Firms

Article 2: The Measures shall govern the engagement in trademark agency business by law firms and their lawyers.

For the purposes of these Measures, the term “law firm” means an organisation in which lawyers practise their profession.

For the purposes of these Measures, the term “lawyer” means a practitioner who has legally secured a lawyer's licence and been assigned by his/her law firm to provide legal services to a concerned party.

Article 3: When engaging in trademark agency business, a law firm and its lawyers shall practise in accordance with the law, in good faith and with due diligence, strictly abide by lawyers' professional ethics and practice discipline, and submit themselves to monitoring by concerned parties and society.

Article 4: Administrations for industry and commerce and judicial administrative authorities shall regulate the engagement in trademark agency business activities by law firms and their lawyers in accordance with the law.

Part Two: Scope of business and record filing

Article 5: A law firm may be retained by a party and assign lawyers to handle the following trademark agency matters:

(1) acting as agent in relevant trademark matters falling under the jurisdiction of the Trademark Office of the State Administration for Industry and Commerce (the TMO), such as trademark registration application, amendment, renewal, assignment, licence replacement, pledge registration, licensing contract record filing, opposition, de-registration, cancellation, and the international registration of marks under the Madrid System;

(2) acting as agent in relevant trademark matters falling under the jurisdiction of the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (the TRAB), such as reviews of the rejection of, opposition to, and cancellation of, trademark registrations and registered trademark dispute cases;

(3) acting as agent in matters related to other international registrations of marks;

(4) acting as agent in trademark infringement evidence investigations and trademark infringement complaints;

(5) acting as agent in trademark administrative review and administrative action cases;

(6) acting as agent and participating in trademark dispute mediation and arbitration activities, etc.;

(7) acting as trademark law advisor in providing trademark law consultation and drawing up trademark legal documents on behalf of clients; and

(8) acting as agent in other trademark law matters.

A law firm that wishes to engage in the trademark agency business set forth in Items (1) and (2) of the preceding paragraph shall carry out record filing with the TMO.

Article 6: When carrying out record filing, a law firm shall submit the following materials to the TMO:

(1) a written record filing application, providing information such as the name, domicile, organisational form, person in charge, telephone, fax, e-mail address and postal code of the law firm; and

(2) a photocopy of the law firm's practice licence bearing its stamp.

If all the application materials are in order, the TMO shall complete the record filing and make an announcement to that effect within 15 days of the date of receipt of the application. If the application materials are incomplete, the applicant shall be notified to provide the missing materials and/or make corrections, and record filing shall be carried out only after it has done so.

Article 7: In the event of a change in recorded particulars such as the name, domicile, person in charge and contact information of a law firm, the law firm shall carry out the amendment of record filing with the TMO within 30 days of the change. When carrying out the amendment of record filing, the following materials shall be submitted:

(1) a written application for the amendment of recorded particulars;

(2) the document evidencing the changed particulars issued by the judicial administrative authority of the place where the law firm is located; and

(3) a photocopy of the law firm's practice licence bearing its stamp.

For a change in a recorded particular other than the name, domicile or person in charge, the documentation specified in Item (2) of the preceding paragraph may be dispensed with.

Article 8: If the business of a law firm that has carried out record filing for its trademark agency business is terminated, it shall apply to the TMO for settlement and the cancellation of the record filing. When applying for settlement, the following materials shall be submitted (in duplicate):

(1) a written settlement application, stating the matter applied for, the firm's bank, account number, payee, person in charge and contact information;

(2) a list of the trademark agency matters that the firm has reported to the TMO and TRAB; and

(3) the document issued by the firm indicating its authorisation of the person in charge to carry out the settlement procedures.

The TMO shall complete the law firm's settlement procedures, issue proof of settlement, cancel its record filing for engaging in trademark agency business and announce the same within three months of the date of receipt of the application.

Part Three: Business rules

Article 9: The handling of a trademark agency matter by a lawyer shall be centrally accepted by the law firm, which shall execute a written engagement contract with the client, collect standard fees according to state provisions and truthfully enter them in its accounts.

When accepting a trademark agency matter, a law firm shall conduct a conflict of interest review in accordance with relevant provisions and may not violate provisions by accepting a trademark agency matter that poses a conflict of interests with legal matters handled by the firm or with its clients.

Article 10: When a lawyer handles a trademark agency matter, he/she shall strictly perform his/her agent duties in accordance with the engagement contract and report to the client on his/her progress in handling the assignment in a timely manner. He/she may not delay or refuse to act as agent without legitimate grounds.

If an assignment violates the law, the client utilises the services provided by the lawyer to engage in illegal activities, or the client deliberately withholds important facts, conceals evidence or provides false or fabricated evidence, the lawyer shall have the right to refuse to act as agent for the client.

Article 11: The legal opinions issued and the relevant documents provided by a lawyer in respect of his/her acting as trademark agent shall comply with relevant laws, regulations and rules, be in compliance with the requirements of the TMO, the TRAB and the local administration for industry and commerce, be true, accurate and complete, and shall be issued after being found to be in order and stamped by the law firm.

Article 12: A law firm that has carried out record filing with the TMO shall remit advance payments of trademark fees into the TMO's account in accordance with provisions.

If the balance of advance payments of trademark fees is insufficient, the TMO or TRAB will not, in accordance with the first paragraph of Article 18 of the Implementing Regulations for the Trademark Law, accept the trademark applications submitted by the law firm on behalf of its clients.

Article 13: When a law firm and its lawyers handle a trademark agency matter, they may not entrust the handling thereof to another entity or individual or cooperate in the handling thereof with a firm that is not a legal service firm or an organisation that is not a trademark agency.

Article 14: A lawyer may practise with only one law firm and may not concurrently engage in trademark agency business in another trademark agency.

Article 15: When handling a trademark agency matter, a law firm and its lawyers shall comply with provisions on lawyer confidentiality. Without the consent of the client, they may not disclose the matter on which they acted as agent or related information to other entities or individuals.

Article 16: A law firm and its lawyers may not solicit trademark agency business by improper means such as denigrating other law firms and their lawyers, trademark agencies and their trademark agents or the payment of referral fees.

Article 17: When handling a trademark agency matter, a law firm and its lawyers may not exploit the advantages conferred by their provision of legal services to seek to obtain the rights and interests disputed by the parties, may not accept property or other benefits from the other party, or collude in bad faith with the other party or a third party to harm the interests of the client.

Article 18: When grounds for termination of a law firm arise, if there are outstanding trademark agency matters, the law firm shall, in a timely manner, hold consultations with its clients on terminating the agency relationship or inform the clients to carry out the procedures to change agencies; if the client is a foreigner or foreign enterprise, the law firm shall assist him/her/it in carrying out such procedures.

If a lawyer changes the firm with which he/she is practising, ceases practising or is suspended from practising, he/she shall, as arranged by the law firm, duly carry out the procedures for the handover of his/her outstanding trademark agency matters in a timely manner.

Article 19: A law firm shall strengthen the supervision of its lawyers engaging in trademark agency business, remedy violations of laws and regulations committed by them in the course of their trademark agent practice activities in a timely manner, and mediate in disputes with clients arising in the course of their practice.

A law firm shall arrange for its lawyers to undergo trademark business training and arrange for exchanges of experience and discussions of the business so as to enhance the trademark agency business level of its lawyers.

Part Four: Regulation

Article 20: If a law firm and its lawyers commit a violation of laws, regulations or rules while engaging in trademark agency business and a warning or fine is called for, the penalty shall be imposed in accordance with relevant laws, regulations or rules by the administration for industry and commerce or judicial administrative authority that accepted the complaint or discovered the problem; if ordering the law firm to suspend operations and undergo rectification or revocation of its practice licence is called for, or ordering the lawyer to suspend practice, or the revocation of his/her practice licence is called for, the penalty shall be imposed by the judicial administrative authority in accordance with the law. If a violation of the code of the legal profession is committed, the law society shall impose the appropriate professional sanctions.

If a violation of the law committed by a lawyer and his/her law firm in the course of engaging in trademark agency business is suspected of constituting a criminal offence, the case shall be transferred to the judicial authority for handling.

Article 21: If a law firm and its lawyers violate Article 7, 8 or 18 hereof, making it impossible for the document issued by the TMO or TRAB to be served by the prescribed deadline, the legal consequences thereof shall be borne by the law firm and its lawyers.

If a violation by a law firm and its lawyers of Article 7, 8 or 18 hereof results in the served document being returned or the lodging of a complaint by the client and the same is ascertained after review, the TMO may publicly announce the same in accordance with provisions.

Article 22: If a law firm is ordered to suspend operations and undergo rectification in accordance with the law, the TMO and TRAB may suspend acceptance of new trademark agency matters from the law firm while its operations are suspended and it is undergoing rectification.

If a law firm that has carried out record filing with the TMO is ordered to suspend operations and undergo rectification, it shall report on the circumstances and duration of the penalty to the TMO and TRAB in a timely manner.

Article 23: In the course of their investigation and handling of violations of the law committed by law firms and lawyers engaging in trademark agency business, the administration for industry and commerce and the judicial administrative authority shall cooperate, exchange information and establish a coordination and consultation mechanism. Where, in accordance with the law, a penalty is to be imposed by the other party, the case shall be transferred to the other party for handling in a timely manner and once a party has imposed a penalty, it shall inform the other party in writing of the results of the penalty.

Part Five: Supplementary provisions

Article 24: The State Administration for Industry and Commerce and the Ministry of Justice are in charge of interpreting these Measures.

Article 25: These Measures shall be effective as of January 1 2013.