December 05, 2019

Amendments to the intellectual property field in China and India

The Chinese National Intellectual Property Administration (CNIPA) has formally implemented amendments to the trademark legislation of China. The changes were written into law as of November 1, 2019, and entered into effect through the implementing regulations on December 1, 2019.

The altered legislation intends to eliminate bad faith trademark filings, creating new grounds for challenges in order to target applications filed with no intent to use the trademark. This is widely set out in both the law and regulations, applying to malicious trademarks which are not registered for the purpose of use. The legislation allows for the sanctioning of said bad faith filings, with applicants bearing potential legal responsibility in both civil and criminal proceedings.

The regulations enforcing these amendments aim to provide a more efficient implementation of the trademark law, focusing on four main aspects of the registration procedure. These include good faith violations and the sanctioning of malicious trademark filings, as well as the streamlining of procedures regarding examination of malicious applications.

As such, any applications deemed to have been filed in bad faith upon examination may now be rejected outright. As per the regulations, bad faith applications are defined as maliciously applying for a trademark in the absence of a purpose to use it, imitating or translating a well-known trademark of another as well as filing applications despite knowledge that the mark was in previous use, or jeopardising prior rights of others. This also applies to agents and representatives filing for a trademark without adequate authority and to any other filing deemed deceptive or in bad faith. Furthermore, information regarding the amount of registered trademarks, the category of designated use may also be used to determine whether a trademark has been filed maliciously.

Additionally, both the legislation and regulations implement the rejection of filings during opposition on the grounds of bad faith. Sanctions that may be implemented for violations of the provisions regarding such filings include a range of fines. These span between 10,000 and 100,000 CNY for trademark attorneys. A further deterrence is set out for individual trademark applicants, with a potential fine varying from treble of the proceeds of illegal gains from the malicious trademark up to 30,000 CNY.

Also taking steps to modernise the intellectual property field, the IP office of India (IPO) has formed a Patent Prosecution Highway (PPH) cooperation with the Japanese Patent Office (JPO). This is the first cooperation of its kind between India and Japan, and as such will initially be implemented as a pilot program for a period of three years. The PPH proposal was bilaterally approved on November 20, 2019, and is expected to be implemented in due course. The PPH cooperation will benefit applicants from both India and Japan significantly, allowing fast track examination of filings that meet the criteria and subsequently expediting patent applications. Fast track examination is available for the PCT national phase or conventional applications.

Author: Danielle Carvey