On January 13, 2023, the National Intellectual Property Administration released the draft amendment of the Trademark Law (for public consultation) and its explanatory notes, marking the beginning of the fifth revision of the Trademark Law. The draft proposes changes aimed at strengthening the use of  ttrademarks, maintaining market order, optimizing trademark registration procedures, and regulating malicious registrations.

This article summarizes the main changes in this amendment to help readers better understand the changes in the trademark legal system.

1、Introduction of a trademark use commitment system

Add the use or use commitment of the trademark during the application stage. After registration, the registrant is required to provide a statement on the use of the trademark or legitimate reasons for non-use within twelve months after every five years from the approval of registration. Multiple trademarks can be explained collectively. If the registrant fails to provide a statement upon expiration, the administrative department will cancel the registration of the trademark within six months from the date of notification. The authenticity of the statement will be randomly inspected by the administrative department and may require supplementation, delegation of local departments for verification, and revocation according to their authority.

• The revocation system has been improved. 

Three additional grounds for revocation have been added, two of which may be revoked based on authority. The following grounds have been added: the use of a trademark leads to misunderstandings by the public about the quality of goods or the origin of the goods; for collective trademarks and certification trademarks, if the registrant violates their obligations and the circumstances are particularly serious, they may be revoked based on authority;

the use or exercise of the exclusive right to use a registered trademark seriously harms public interests and causes significant adverse effects, and revocation may be carried out based on authority.

• The legal responsibility of changing registered trademarks on their own has been clarified. 

If a registrant changes the registered trademark without authorization, they may be fined up to "100,000 RMB" and have their trademark revoked if they do not correct it within the specified time frame; if it constitutes trademark infringement, it will be handled in accordance with Article 74, paragraph 2 (trademark enforcement) and Article 85, paragraph 1 (compensation for losses and criminal prosecution).

2、Expansion of the scope of prohibited signs and trademarks that cannot be registered

Signs that are the same or similar to important traditional cultural symbols or names, contrary to the socialist core values or excellent traditional Chinese culture, as well as domestically-known geographical names, cannot be used as trademarks. The draft also adds that only "technical terms" cannot be registered, and they cannot be distinguished by use.

3、The conditions for trademark registration have become more stringent, further regulating malicious registration

• Specific circumstances of malicious registration applications have been clarified, including:

（1）Registering a large number of trademarks without the purpose of using them, thereby disrupting the order of trademark registration.

（2）Applying for trademark registration through deception or other unfair means.

（3）Applying for registration of trademarks that harm national interests, social public interests, or have other significant adverse effects.

（4）Intentionally infringing on the legal rights or interests of others or seeking undue benefits, in violation of Article 18 (protection of well-known trademarks), Article 19 (registration by agents or representatives), or Article 23 (prior rights protection) of this law.

（5）Engaging in other malicious registration activities.

• Penalties for malicious registration (as mentioned in point 2 above) have been increased. 

Warning or fines of up to 50,000 RMB have been stipulated; for serious cases, fines of 50,000 to 250,000 RMB can be imposed and illegal gains can be confiscated. In terms of civil compensation, two types of compensation for malicious registration have been added:

（1）If it harms the rights and interests of others, the injured party can sue for compensation for losses, which must include reasonable expenses.

（2）If it harms national or social interests or causes significant adverse effects, the procuratorial organ may initiate public interest litigation.

• A new clause prohibiting duplicate registrations has been added,which stipulates that "unless otherwise provided, the same applicant can only register one identical trademark for the same goods or services." 

Article 21 further clarifies the situations in which duplicate applications are not allowed: "The applied-for trademark shall not be identical with a prior trademark that has been applied for, registered, or announced for invalidation or revocation within one year before the application date, except as otherwise provided." Article 21 (2) provides exceptions where duplicate applications are allowed:

（1）The applicant can prove that the trademark is different due to minor improvements made based on the prior trademark, for production and business needs.

（2）The prior trademark was not renewed due to reasons beyond the control of the applicant.

（3）The prior registered trademark was cancelled due to failure to provide proof of use in a timely manner, but the prior trademark was actually used.

（4）The prior registered trademark was cancelled due to not providing evidence of use during the three-year non-use cancellation procedure, but the prior trademark was actually used.

（5）The prior trademark has been declared invalid due to a conflict with the prior rights or interests of another party, but such rights or interests no longer exist.

（6）There are other legitimate reasons for duplicate or re-registration of a trademark.

4、Improve the trademark authorization and confirmation procedures

An examination opinion will be added to send out to the applicant when the content of a trademark registration application needs to be clarified or amended. The objection period will be shortened from three months to two months. The review process for non-registration decisions will be cancelled, and the objected party can directly file a lawsuit.

5、Promote coordination between procedures and avoid resource waste

If the fee for a trademark registration application has not been paid, the application will be deemed as not submitted. The regulation on duplicate registration will be added, which specifies that "the same applicant should only register one identical trademark for the same goods or services" and "it is not allowed to register a trademark that is identical to a prior trademark that has been applied for, registered, or announced for cancellation, revocation, or invalidation within one year before the application date". Exceptions include situations where the applicant can prove differences based on minor improvements made on an already in-use prior trademark due to production and business needs, the trademark could not be renewed, was cancelled, or revoked due to reasons beyond the applicant's control or failure to submit usage explanation in a timely manner, and other legitimate reasons.

6、If a trademark is revoked, cancelled, or not renewed for the following reasons, it will not be approved for registration within one year from the announcement date of the revocation, cancellation, or non-renewal

violation of Article 49, Paragraph 1, Item 3 (misleading use of registered trademark), Item 4 (failure to fulfill the obligations of collective or certification trademark, maliciously preventing others from legitimate use, or causing adverse effects), or Item 5 (serious damage to public interests or significant adverse effects); violation of Article 64 (unauthorized alteration of registered trademark); or violation of Article 61 (failure to provide evidence of trademark use) leading to revocation or cancellation; or failure to renew the trademark registration upon expiration.

7、Strengthen the obligation and responsibility of trademark use

The concept of trademark use will be improved, emphasizing the use of trademarks in service places or related media and clarifying that "using behavior includes actions implemented through information networks such as the Internet". The registrant can mark the "R" symbol and "注" symbol in the upper right or lower right corner of the trademark.

8、Further clarify the protection of prior rights

It is clarified that "the registered and used enterprise names (including abbreviations, trade names, group names, etc.) and social organization names with certain influence" belong to prior rights. The application for trademark registration shall not harm the prior rights of others.