On May 1, China’s amendments to its trademark law take effect, and while there are a lot of positive changes, DLA Piper partner Horace Lam says the new law also creates opportunities for trademark hijackers. Lam, who works in the Beijing office, discusses five steps employers should take in an alert on the firm’s website.
1. Do a trademark audit: China is purely a first-to-file system, says Lam, and any gaps in a portfolio could allow hijackers to acquire your marks. The new law takes away the opponent’s right to file a review against the Chinese Trademark Office’s decision in an opposition if the initial attempt fails; thus, the only choice would be filing for cancellation.
2. Tighten up the portfolio: File applications to address issues and close the gap. Lam says the rules provide for multiclass applications, even for defensive purposes.
3. Start compiling good records: In the latest draft, the time limit to file supplemental submissions and evidence has been reduced from three months to 30 days.
4. Record all trademark license agreements as appropriate: Under the new rules, the Trademark Office will not process late-filed license recording applications.
5. Plan ahead for your enforcement campaign: Lam says the new law has substantially increased compensation for damages and penalties.