21 to 23 July 2010, Hohhot

IPR2 in co-operation with the Legislative Affairs Commission (LAC) of the National People’s Congress (NPC) held a workshop dedicated to the revision of China's Trademark Law, drawing on the expertise and experience of European academics, officials and practitioners working the field of trademark law, to address questions raised by the LAC officials responsible for drafting the new law, review and discuss its expected impact, and make suggestions relevant to the drafting work.

The workshop supported an interactive exchange between the 15 drafting officials from LAC, the Legislative Affairs Office (LAO) and the State Administration of Industry and Commerce (SAIC) and European and Chinese experts on relevant issues related the adjustment of the legal framework for the protection of trademarks. It helped to improve the understanding of existing legal framework, mechanisms and best practices in the EU regarding trademark protection. 

The workshop was held in a highly cooperative and interactive atmosphere and both sides benefited from the exchange. Following the conclusion of the workshop, the European experts drafted a report summarising the workshop discussions and exchanges for consideration by LAC.

The workshop was opened by Mr An Jian, Vice-Minister of LAC; Mr Huang Jianchu, Director General of LAC’s Economic Law Office and Ms Wang Qing Deputy Director General of LAC’s Economic Law Office.  Other participants include senior officials from China’s Trademark Office (CTMO) of SAIC as well as the Laws and Regulations Department of SAIC and the Education/Science/Culture/Public Health Department of the Legislative Affairs Office (LAO). 

The Chinese government is currently revising the Trademark Law in line with the objectives of the National IP Strategy (released in June 2008) and to address the dramatic growth in domestic and international trademark applications and increasing infringement. By 2020, China plans to reach an internationally competitive level of trademark registration procedure, use, protection and management. LAC is now drafting the revised legislation, following initial preparation by the SAIC and review by the LAO. 

The trademark legislation is a key element of the Chinese IP system and plays a prominent role in the guidelines of the National IP Strategy of China. 

The technical topics discussed included: 

• Whether to protect non-traditional trademarks (e.g. singular colour trademark, voice and smell trademarks etc.) in a registered way? How are non-traditional trademarks protected through registration in Europe and since when? The current registration system.
• Whether to protect a non-registered trademark that is influential by having been used but not constituting a well-known trademark? If protected, whether the protection scope for such non-registered trademark is the same as that of a registered trademark? 
• How to cope with the conflict between the application of a trademark registration and prior rights like design, business name, etc.
• Subject, grounds and procedure for an opposition against a trademark application.  
• Current system regarding invalidity of a registered trademark; time limit for addressing the invalidity; to which institutions can the invalidity request be addressed to; legal consequences of the invalidity; impact of trademark invalidity on previously signed trademark license agreements and previous court decisions regarding infringements of the invalid trademark.  
• Current system for trademark revocation/cancellation; subject, grounds and institution accepting the trademark revocation/cancellation request; legal consequences of trademark revocation/cancellation.
• Remedy approach and procedure when a party is not satisfied with the decision on opposition or revocation/cancellation by the trademark administration authorities. In case of a judicial proceeding, is the trademark administration authority party to the proceedings or is it otherwise involved in the proceedings? In which situations can the court not directly change the decision of the trademark administration authority but order the trademark administration authority to make a new decision? 
• Categories of trademark infringement behaviours; calculation method for civil compensation and criminal penalties regarding trademark infringements; jurisdiction over trademark infringement cases.  

Current system regarding trademark revocation - Community Trademark (CTM) system, Mr Vincent O'Reilly, Office for Harmonisation of the Internal Market (Trademarks and Designs)

Current system regarding invalidity of a registered trademark - Community Trademark (CTM) system, Mr Vincent O'Reilly, Office for Harmonisation of the Internal Market (Trademarks and Designs)

Grounds and procedure for an opposition against a trademark application  - Community Trademark (CTM) system, Mr Vincent O'Reilly, Office for Harmonisation of the Internal Market (Trademarks and Designs)

Unregistered Trademarks and the Law of Passing Off, Ms Fiona Clark, 8 New Square (Chambers of Mark Platts-Mills QC)

Non-traditional Trademarks, Ms Fiona Clark, 8 New Square (Chambers of Mark Platts-Mills QC)

Remedy approach and procedure when a party is not satisfied with the decision on opposition or revocation/cancellation by the trademark administration authorities, Mr Marc L. Holtorf, Clifford Chance

How to cope with conflicts between the application of a trademark registration and prior rights like design, business name, etc., Mr Marc L. Holtorf, Clifford Chance

Categories of trademark infringement behaviours; calculation method for civil compensation and criminal penalties regarding trademark infringements; jurisdiction over trademark cases, Mr Marc L. Holtorf, Clifford Chance

This forms part of IPR2’s broader co-operation with LAO and LAC on the revision of the Trademark Law. Read more.

LAC is the working body of the Standing Committee of the National People's Congress (NPC) responsible for legislative and other legal affairs, particularly drafting of fundamental laws and amendment bills including IP laws, and acts as assistant and legal counsel to the deputies and leaders of NPC.

Useful links 

Legislative Affairs Commission (LAC) of the Standing Committee of the National People's Congress (NPC) 

For more information on trademark and civil procedure legislation, contact Mr Andreas Obst This e-mail address is being protected from spambots. You need JavaScript enabled to view it . 

For general information on IPR2, contact Ms Tamryn Barker This e-mail address is being protected from spambots. You need JavaScript enabled to view it .