The newly revised Trademark Law will come into force on January 1, 2027

Key Points

Explanations

Addition of Dynamic Marks

In addition to the eligible registrable signs prescribed under the current law, namely words, figures, letters, numerals, three-dimensional signs, combinations of colors and sounds, dynamic marks and combinations thereof with the aforesaid elements are newly added as registrable trademarks. Accordingly, enterprises may file applications for the registration of brand boot-up animations, dynamic short-video logos and the like based on actual business needs.

It should be noted that pursuant to Article 18 of the new law: “Where an application is filed for trademark registration based on a three-dimensional sign, color combination, sound, dynamic mark or the like, no trademark registration shall be granted to any shape, color combination, sound, dynamic effect or the like that arises inherently from the nature of the goods, is necessary to achieve a technical effect, or confers substantial value on the goods.”

Expansion of the scope of signs prohibited from registration and use

A new clause is added to Article 15 of the new law, explicitly including signs identical with or similar to symbolic elements associated with the name, Party flag, Party emblem, medals of the Communist Party of China, important theoretical achievements, historical events and the like within the scope of signs prohibited from registration and use.

Regulation on the registration of misleading “scheming trademarks”

Article 15 of the new law stipulates that signs that are deceptive and likely to cause the public to misunderstand the quality, craftsmanship, raw materials and other attributes of goods, or the place of origin thereof shall not be registered. Enterprises are therefore advised to refrain from applying to register signs such as “hand-kneaded” or “zero-additive”. Such applications will normally be rejected, even if registration is secured by chance, pursuant to Article 56 of the new law, using a registered trademark in a manner that misleads the public will expose the enterprise to orders to rectify within a time limit, fines, and even trademark revocation.

Stricter standards and enforcement against trademark hoarding and excessive defensive registration

Paragraph 1 of Article 4 of the current law, which states “An application for malicious trademark registration filed without the intent to use shall be rejected”, is revised to Paragraph 1 of Article 19 of the new law, that is “No trademark registration shall be granted where an applicant files trademark applications without the intent to use and the applications evidently exceed the reasonable needs of normal production and operation.”

A new Paragraph 2 is added: “No person may file trademark registration applications by means of deception or other improper means.”

Article 54 of the new law prescribes that anyone who files trademark applications in violation of Article 19 and causes adverse impacts may be given a warning together with a fine of not more than RMB 100,000.

Trademark hoarding is clearly subject to such regulation, and enterprises will face greater difficulties in filing defensive trademark registrations. Applications covering classes, quantities and scopes obviously beyond an enterprise’s existing business scope and lacking realistic prospects for actual use will risk rejection, and may even adversely affect its subsequent trademark filings.

Key Points

Explanations

Ex officio initiation of non-use cancellation proceedings

Pursuant to Paragraph 2 of Article 57 of the new law, where a registered trademark has not been used for three consecutive years without justifiable reasons, the trademark administrative department under the State Council may revoke such registered trademark. Going forward, apart from non-use cancellation applications filed by competitors, trademarks left unused for a long time may also be revoked proactively by the trademark authority ex officio. It is recommended that enterprises promptly review the usage status of their registered trademarks and adopt corresponding disposal measures.

Heavier penalties for unauthorized alteration of registered particulars

Paragraph 1 of Article 57 of the new law sets a clear fine cap (not exceeding RMB 50,000) for acts of unilaterally altering a registered trademark, the registrant’s name, address or other registered particulars during trademark use.

Tighter regulation on misleading trademark use

Article 56 of the new law lists the act of using a registered trademark in a misleading manner as a punishable violation. Enterprises can no longer exploit loopholes under the former Trademark Law to conduct misleading promotion by combining registered “scheming trademarks” with other content; such conduct will now lead to mandatory rectification within a time limit, fines or even revocation of the registered trademark.

Trademark Licensing

A new provision is added to Article 55 of the new law: “Where a licensee fails to fulfil its quality assurance obligations, the licensor shall have the right to terminate the trademark licensing contract.” This new clause enables licensors’ quality supervision to carry genuine binding force, compelling licensees to pay greater attention to product quality to avoid contract termination. Licensors may design contractual clauses to maximize the effectiveness of this new rule.

Trademark Assignment

Pursuant to Article 46 of the new law: “Where a registered trademark is assigned, the trademark registrant shall assign together all similar trademarks registered by it in respect of identical goods, as well as identical or similar trademarks registered in respect of similar goods.” (Note: Not a newly introduced provision)

A new clause is added to Article 47: “For the assignment of collective marks and certification marks, the assignee shall possess corresponding subject qualification and supervision capacity.”