China Trademark Law: Recent Events and What’s Ahead

The China National Intellectual Property Administration (“CNIPA”) released its annual report for 2022 earlier this month, which you can download (Chinese language only) on CNIPA's website. Here are some of the key takeaways and statistics:

Trademark Applications in 2022: Key Facts

• The total volume of trademark applications filed in 2022 was 7.52 million, a reduction of 20.5% compared with 2021.
• The number of applications filed by non-Chinese applicants dropped by 17.8%.
• A trademark examination now takes four months on average. This means a smooth trademark application may mature into registration in just seven months.
• The CNIPA introduced a fast-track examination for qualified applications in the beginning of 2022. However, just 153 fast-track applications were examined in 2022, likely due to the high qualifying requirements.
• A total of 6.18 million trademark registrations were issued in 2022.
• At the end of 2022, there were a total of 42.67 million valid registrations in the trademark register, including a total of 2.03 million registrations owned by non-Chinese applicants.
• Among the applications examined in 2022, 52% were allowed for publication, while 48% were provisionally refused.

Oppositions, Review, and Adjudication: A Brief History of 2022

• A total of 146,000 oppositions were filed in 2022, and the average examination timeframe for oppositions was around 11 months. Among these oppositions, 45.1% were entirely upheld, 11.8% were partially upheld, and 43.1% were overruled.
• A total of 423,000petitions for trademark review and adjudication were filed in 2022. The majority (around 332,000) were requests for review of provisional refusal decisions.
• Of the reviews of trademark refusals in 2022, 65.8% of the petitions were entirely overruled, 10.9% were partially overruled, and 23.3% resulted in the grant of the petitioned trademark applications.
• A total of 22,000 trademark review and adjudication decisions made by CNIPA were appealed to the Beijing IP court in 2022, meaning only 5.7% of the cases were brought forward for judicial review.

Our Thoughts

The numbers above reflect several changes in CNIPA’s practices. To provide you with more insight, our IP partner Reking Chen, who has been recognized as a “Next Generation Partner” by The Legal 500 and ranked by both Managing IP and the World Trademark Review, weighed in on some of these recent trends.

What were the biggest trends that you saw in the PRC trademark landscape in 2022?

Reking Chen: Strengthened protection against bad faith squatters. We have seen a large number of bad faith applications filed by squatters being refused on an ex officio basis. This move saves a lot of time and costs for genuine brand owners.

We have also witnessed a tightened review process for examining relative grounds for refusal, which has resulted in significantly higher provisional refusals. Trademark co-existence agreements are no longer accepted as proof of non-confusion for trademark registration purposes, which has made it harder to obtain trademark registrations in China, given that the register is already extremely crowded.

What are some of the biggest changes that you anticipate for trademarks/trademark holders in the PRC in 2023?

Reking Chen: CNIPA will continue its efforts in combating against trademark squatters on an ex officio basis. That said, brand owners are advised to continue watching the trademark register and filing oppositions when they identify hijacking trademark applications. Recent judicial practice seems to indicate that damage claims may also be considered when there is clear evidence of bad faith. As a result, there may be less of a need to file defensive trademark applications, which can save costs for brand owners. Still, given China’s first-to-file system for trademarks, brand owners who have interests in China should consider filing as soon as possible.

Another major change is that CNIPA is in the process of amending the PRC Trademark Law. This will be the fifth amendment to the law, and the draft released in January 2023 incorporated aggressive measures in combating trademark squatters, such as a prohibition against filing without an intent to use, administrative penalties against bad faith filings, and avenues for claiming damages and requesting the transfer of bad faith filings. We are hoping to see positive developments before the end of the year.

About DaHui’s IP Team

DaHui has extensive experience in advising on intellectual property issues in the PRC. We can handle everything from registration to enforcement and litigation. In addition to trademark and copyright issues, we help clients develop strategies to protect their technology and trade secrets. We also advise on Internet piracy issues.

Abroad, we frequently coordinate with counsel in other countries to develop worldwide IP strategies for our clients. In the PRC, we work with the China National Intellectual Property Office (CNIPA), the State Administration for Market Regulation (SAMR) and its local branches, Ministry of Culture (MOC), and the National Copyright Administration (NCA), to keep abreast of regulatory changes to ensure our clients’ IP is protected. And our attorneys are experienced at representing clients in IP proceedings in both judicial and administrative venues. We have litigated successfully before courts across China, including the Supreme People’s Court and the specialized IP courts/tribunals. Our clients appreciate our attention to detail, our thorough deliberation and strategic counselling, and our ability to get things done right. Trademark infringers and squatters do not like us.

DaHui’s IP team is available to discuss these recent and upcoming changes, the possible impacts on international brand owners, and other IP matters.