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China strengthens its trade mark law for brand owners



United Kingdom

On 23 April 23, China published an amended Trade Mark Law which will come into effect on 1 November 2019. The revisions introduce intent to use requirements and increase the level of punitive damage and statutory damage to crack down on bad faith filings and strengthen trade mark protection.

On 23 April 2019, China published an amended Trade Mark Law which will come into effect on 1 November 2019. It is the fourth revision of the law and the last revision was in 2013. The revisions introduce intent to use requirements and increase the level of punitive damage and statutory damage to crack down on bad faith filings and strengthen trade mark protection.

1. Intent to use requirement


In 2018, there were over seven million trade mark applications and over five million trade mark registrations in China. Such a huge amount shows the increase of trade mark awareness of Chinese business but unfortunately, at the same time, many of these trade marks are filed with bad faith. When we monitor and file oppositions for our clients, we find so many trade mark applications similar to famous brands and trying to take advantage of their high popularity. Many applicants filed the same registrations for one logo at the same time as a big event of the brand. From media reports, we also found news such as one company filing over 5,000 trade marks in a day when the company was only established one month ago, and another company filing over 10,000 trade marks in two days.

It is always a huge burden for large brand owners to monitor and oppose these similar trade mark filings. But there are problems even for small brands. When brand owners decide to enter into the Chinese market, often, they would find that their brands have already been registered as trade marks in China. Considering the difficulties in invalidating trade marks and the timeline for cancellation based on non-use, many brand owners decide reluctantly to buy trade marks from the trade mark squatters. Therefore, registering and selling trade marks has been developed as a business model by trade mark squatters.

Article 4 of the new law

In response to the above problems, Article 4 of the new Trade Mark Law states that “any application for trade mark registration that is malicious and is not filed for the purpose of use shall be rejected”, aiming to crack down the bad faith filings.

But, it raises questions on how this article might be enforced. Does it mean that China now requires trade mark applicants to provide evidence to prove that the trade mark is filed for the purpose of use?

The articles amended with reference to Article 4 were Articles 19, 33, 44 and 68. Article 19 states that trade mark agents should not accept instructions to file trade marks without intent to use and Article 68 provides penalties for trade mark agents who violate Article 4. Article 33 and 44 provide that oppositions and invalidation actions can be filed based on Article 4. Therefore, the new law does not require evidence to prove the intent of use during trade mark applications. Accordingly, it seems that it is quite unlikely that the CNIPA (China National Intellectual Property Administration) will directly reject trade mark applications based on Article 4 during the trade mark examination procedure.

However, the CNIPA published the Provisions on Standardizing Trade mark Application Behaviour (draft for comments) in February 2019 (“Provisions”). The Provisions identified trade marks filed without intent to use as one type of “abnormal applications”. The examiners may request trade mark applicants to provide evidence or explanations for abnormal applications. After the Trade Mark Law revision, the CNIPA announced that it will revise and promulgate the Provisions as soon as possible to further implement the revisions of the new Trade Mark Law. We expect the promulgation of the Provisions will provide a clearer answer to the above question.

2. Trade mark protection

Punitive damages

The last revision of the Trade Mark Law in 2013 introduced for the first time punitive damages for malicious trade mark infringement with serious circumstances and set the punitive damage as 1 to 3 times of the amount, determined as:

(1) the loss to the trade mark owner;

(2) the profit gained by the infringer; or

(3) an amount reasonably determined with reference to the royalties.

Article 63 of the new law raises the level of punitive damage to 1 to 5 times the determined amount.

However, in practice, due to the difficulty of collecting evidence, it is very difficult or sometime even not possible for the trade mark owner to provide enough evidence so that the amount of damage can be calculated through the above three ways. Therefore, there are not so many cases where the courts will deliver punitive damages since there is no basic amount to multiply as 1 to 3 times or 5 times. (For a case where this was successful in 2017 see our blog, New Balance's trade mark case in China – about more than just the damages.)

Statutory damages

Consequently, the most commonly used way to decide the amount of damage is statutory damages. The 2013 revision increased the maximum amount of statutory damage from RMB 500,000 to RMB 3 million. We have already seen an increasing amount of awards of statutory damages delivered by the Chinese courts in trade mark infringement cases in recent years. Therefore, we think it will be an effective way to further strengthen the trade mark protection that the new law raises the statutory damage from up to RMB 3 million to 5 million.

Additional orders

In addition, Article 63 stipulates that the courts may, at the trade mark owner's request, order the destruction of the infringing goods, materials and tools for making the infringing goods without compensation, and under special circumstances, such materials and tools can be prohibited from entering commercial channels.

The same article adds in particular that “infringing goods shall not be allowed to enter commercial channels after merely removing counterfeit mark”. This is in response to a long-time concern raised by trade mark owners regarding the reappearing of infringing goods in the market, as it is easy for infringers to re-affix the counterfeit mark on the infringing goods.


The above amendments are aimed at reducing bad faith filings, increasing the costs to infringers, raising the deterrence of future infringement, and improving the trade mark protection environment. Of course, the new law is not going to fix every problem. We will see how effective these revisions will be after implementation.

Furthermore, according to a recent announcement, CNIPA has already started preparation of a new round of Trade Mark Law revision. We expect a more favourable climate for brand owners and encourage brand owners to be more active in protecting their trade marks in China.


Should you wish to obtain further information or discuss any issues regarding this blog, please contact the authors:

Xu Lin, Partner

Alex Shen, Senior Associate







  • 关于以使用为目的申请商标的规定











  • 关于商标保护的新规定


  1. 惩罚性赔偿


















林旭  合伙人/律师


沈敏杰 高级律师




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