By Lynne Boisineau
On April 23, 2019, China’s government pushed through new intellectual property legislation with remarkable speed that made drastic changes to its current Trademark and Unfair Competition laws. These changes reflect China’s desire to improve its IP protection reputation and to level the playing field for non-Chinese companies that are trying to register and enforce their trademarks and copyrights in China.
China is a first-to-file country and the application fees for IP protection are much lower for Chinese citizens than for applicants from other jurisdictions. This has led to some Chinese nationals filing for US marks and blocking US companies from selling their goods / services in China where the Chinese registrant has no intention of using the mark, but instead is holding it for the highest bidder.
The new law provides a post-registration approach to address such malicious filings by offering additional legal grounds for opposition and invalidation in relation to such bad faith filings. Furthermore, any registrant found to have obtained a bad faith trademark registration will be subject to administrative penalties, and there may even be some “societal credit” penalties down the road as well.
Under the new laws, Chinese courts also have more power to impose greater damage awards against trademark infringers, with the maximum statutory penalty of RMB 5 Million (or approximately $725,000 USD) to be paid by infringers, and the ability to add punitive damages for willful (malicious) infringement up to treble damages.
Finally, the new changes also redefine “trade secrets,” impose liability on third parties in some cases who assist in trade secret misappropriation, detail what constitutes actionable behavior in relation to the theft of same, and shifts the burden of proof to the defendant to prove that the subject matter does not meet the statutory requirement for a trade secret.
These changes are all positive for US companies protecting their brands in China. It appears that the Chinese government is serious about cleaning up its side of the street as it completely bypassed the laborious process typically used in instituting a new law and did not ask for input / comments over an extended period of time beforehand. If the Chinese government truly means business, this should make your Chinese registrations more valuable and easier / less expensive to enforce.
Lynne Boisineau
Lynne Boisineau focuses her practice on trademark prosecution, counseling, enforcement and licensing, as well as providing litigation support in the areas of trademark, right of publicity and copyright.
Lynne assists clients with intellectual property issues related to social media, smartphone apps, and infringing content removal. Lynne also has significant experience in domain name proceedings under the Uniform Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension (URS) System.
After law school, Lynne joined a small law firm where she focused on all aspects of intellectual property prosecution and litigation. At that firm, Lynne served as second chair in numerous litigation matters related to trademarks and copyrights, both in the federal courts and before the Trademark Trial and Appeals Board of the U.S. Trademark Office.
Lynne joined McDermott Will & Emery in 2009, where she continued her practice of global brand registration and enforcement, and was the firm’s only registered Trademark Agent for the Trademark Clearinghouse–the most important rights protection mechanism established by ICANN in relation to the launch of the new generic top level domain name program (the gTLDs).
Lynne founded Boisineau Law in 2018. She frequently speaks and writes on topics of interest to the IP community. Her articles on the Right of Publicity and Social Media have appeared in the ABA’s Landslide Magazine and GPSOLO Magazine “best of” issue, and she authored the right of publicity chapter of the ABA’s Computer Games and Immersive Entertainment (2018). Lynne is ranked in the World Trademark Review 1000: The World’s Leading Trademark Professionals (2014-2018).
Lynne is the co-chair of the Women in IP Committee of the Orange County Intellectual Property Organization as well as being an active member of the Trademark Enforcement Policy Advocacy Committee for the International Trademark Association.
Lynne works directly for clients through her own law firm, and also consults for law firms as a freelance lawyer through Montage Legal Group. For more information on using Lynne for project, please email [email protected]