China’s eagerly anticipated amendments to its trademark law come into force on May 1, 2014. This new legislation aims to modernize the trademark process, strengthen trademark enforcement and make trademark squatting and counterfeiting more difficult. But it can also yield opportunities for trademark hijackers.
Here are the Top 5 steps to take now to protect your trademarks:
1. Do a trademark audit
The new law makes opposition difficult. It removes the opponent’s right to file a review against the China Trademark Office (CTMO)’s decision in an opposition if the initial opposition does not prevail. China’s application system is a purely first-to-file, unlike in the US. Any gaps in a portfolio could allow hijackers to acquire your marks.
You should do an audit to determine the gaps in your portfolio and then fill these gaps before the new law takes effect.
2. Tighten up your portfolio
Once any gaps are identified, your company should file applications to address any identified issues and close the gap. The new law provides for multi-class applications, which essentially makes filings less expensive. That also means a lower cost for hijackers.
3. Start compiling good records
The Implementing Regulations section of the new law is still under discussion, but according to the latest draft circulated, the time limit to file supplemental submissions and evidence has been substantially reduced – from three months to 30 days.
4. Record all trademark license agreements on time
Under the current practice, a trademark license has to be recorded with the CTMO within three months upon signing. The new Implementing Regulations expressly provide that the CTMO will not process late-filed recordal applications.
5. Plan your enforcement campaign
The new law has substantially increased compensation and penalties because the government wants to clamp down on infringements. Companies should take advantage of this and act assertively against infringers. Many enforcement options are available in China. This is the time to utilize these options and formulate an effective enforcement strategy.