Industry Hot Spots | Explanation of the Provisions on the Supervision and Administration of Trademark Agents

2022-11-07

In order to implement the spirit of the report of the 20th National Congress of the Communist Party of China on "strengthening the legal protection of intellectual property rights", standardize the behavior of trademark agency, improve the quality of trademark agency services, maintain the normal order of the trademark agency market, and promote the healthy development of the industry, the "Provisions on the Supervision and Administration of Trademark Agency" are formulated in accordance with the provisions of the People's Republic of China Trademark Law (hereinafter referred to as the "Trademark Law"), the "Regulations for the Implementation of the People's Republic of China Trademark Law" (hereinafter referred to as the "Regulations for the Implementation of the Trademark Law") and other relevant laws and administrative regulations (hereinafter referred to as the Provisions). The relevant situation is explained as follows:

I. Background and Necessity

Since the promulgation and implementation of the Trademark Law and the Regulations for the Implementation of the Trademark Law, good social effects have been achieved in regulating the behavior of trademark agencies, guiding trademark agencies to standardize their operations, improving service quality, and promoting the development of the industry. However, with the rapid development of China's economy and society, some new situations and new problems have emerged in the field of trademark agency.

First, the legal provisions related to trademark agency need to be improved. It is necessary to refine the implementation of the relevant provisions of the Trademark Law and the Regulations for the Implementation of the Trademark Law through departmental regulations, especially the latest amendments to the Trademark Law in 2019 on the regulation of malicious trademark registration applications, so as to cope with the complex problems arising in the rapid development of the industry and provide clear legal support for the supervision of trademark agents.

Second, the behavior of trademark agency is not standardized enough, which arouses the attention of public opinion. In recent years, with the lowering of the entry threshold of the trademark agency industry, the number of trademark agencies has increased from more than 100 in 2003 to nearly 70,000, while the number has grown sharply, there are not many agencies that actually have a certain amount of business, and some agencies have non-standard management, uneven service quality, and even engage in or help the client to maliciously preemptively register, hoard trade trademarks, improper rights protection and other illegal acts, which not only damage the legitimate rights and interests of the parties, but also disrupt the market order, and have a negative impact on the development of the industry. It has brought great challenges to the supervision and governance of the industry, and it is urgent to further strengthen the effective regulation of trademark agency behavior.

Third, the legal authorization of trademark agency supervision is insufficient, and there is a lack of clear law enforcement basis. There are few regulatory means, weak regulatory forces, and insufficient credit supervision, so it is necessary to further standardize work processes and strictly administer in accordance with law.

Therefore, in order to enhance the operability of laws and regulations, adapt to the practical needs of the development of the trademark agency industry, solve the problems that arise in practice, and promote the trademark agency industry to take the road of high-quality development, it is necessary to formulate these provisions.

2. Drafting process

In March 2018, the Trademark Office of the former State Administration for Industry and Commerce launched the drafting of the Provisions on the Supervision and Administration of Trademark Agents. After the institutional reform, the State Intellectual Property Office continued to advance, fully drawing on the regulatory experience of patent agents, lawyers and other industries, combined with the practical needs and work practices of the trademark agency industry, and formed a draft for comments on the basis of extensive consultation with local departments, industry organizations, trademark agencies and market entities responsible for intellectual property work, which was released to the public for comments through the Chinese Government Legal Information Network from September 24 to October 24, 2020. At the same time, the opinions and suggestions of relevant ministries and commissions, local departments responsible for intellectual property work, as well as industry organizations, agencies, enterprises and experts and scholars are widely solicited. After studying, absorbing and adopting the opinions of all parties, the provisions were further improved and a draft for review was formed, which was submitted to the State Administration for Market Regulation for legal review in December 2020. The State Intellectual Property Office actively cooperated, and after fully studying and absorbing the opinions of all parties, revised and formed a draft provision, which was deliberated and approved by the State Administration for Market Regulation, and promulgated on October 27, 2022, Order No. 63 of the State Administration for Market Regulation, which will come into force on December 1, 2022.

3. Drafting ideas and main contents

In terms of drafting ideas, the provisions are mainly based on the following three points: first, improve the legal system of trademark agency, sort out and refine relevant legal provisions, and ensure the implementation of the law; The second is to clarify the code of conduct of trademark agents, urge trademark agencies to standardize their operations, and improve the level and quality of agency services; The third is to optimize the way of trademark agency supervision, strengthen pre-filing and supervision during and after the event, protect the legitimate rights and interests of the parties, and improve the efficiency of supervision. There are 43 articles in five chapters, the key contents of which include:

(1) General Provisions

It mainly stipulates the purpose of formulating regulations, trademark agency matters, the concept of trademark agencies and trademark agency practitioners, and the role of industry organizations. (Articles 1 to 4)

(2) Standardize the filing system for trademark agencies

In order to better safeguard the interests of the client, improve the filing system of trademark agencies, supervise the timely filing in accordance with the law, and give full play to the information disclosure role of the filing system, the requirements for trademark agencies to handle filing, renewal of filing, change filing, and cancellation of filing are stipulated, and specific guidance is provided for agencies. By setting a three-year filing validity period, the dynamic cleanup of the agency is realized. Administrative penalties are imposed on trademark agencies that fail to handle the filing, change the filing, extend the filing or cancel the filing in accordance with the law, as well as fail to properly handle the trademark agency business that has not yet been completed, harming the interests of the client or disrupting the order of the trademark agency market. At the same time, it is stipulated that the State Intellectual Property Office shall publicize the filing information to facilitate public supervision. (Articles 5-9 and 36)

(3) Clarify the code of conduct for trademark agents

The first is to clarify the basic principles of engaging in trademark agency business, trademark agencies engaged in trademark agency business shall not adopt fraud, deception and other improper means, and shall not harm the national interest, social public interest and the legitimate rights and interests of others; A trademark agency shall not apply for registration or transfer of trademarks other than its agency services in the name of its legal representative, shareholder, partner, actual controller or senior manager, nor shall it engage in the above-mentioned acts in disguised form through other means such as establishing a separate market entity or a market entity with which it has an affiliated relationship. Second, trademark agencies are required to establish and improve business management systems and operation systems such as quality management, conflict of interest review, malicious application screening, and file management. Third, it reiterates the obligations that trademark agencies and their practitioners should fulfill, including notification, confidentiality, and responsibility for signatures, etc., clarifies that trademark agencies should send relevant materials to clients in a timely manner, and stipulates that trademark agency practitioners shall not work part-time in more than two trademark agencies at the same time. Fourth, in view of the chaos such as low-price malicious competition and false publicity in the trademark agency industry, trademark agencies are required to strengthen professional ethics and professional discipline education, organize business learning, and collect fees in accordance with the principles of voluntariness, fairness and good faith. Fifth, it stipulates the publicity of basic matters and business files of trademark agencies. (Articles 10-19)

(4) Enrich the means of trademark agency supervision

Refine the credit file system for trademark agencies, and carry out hierarchical and categorical evaluations of the intellectual property service industry. In accordance with relevant state provisions, do a good job of the work of trademark agencies submitting annual reports and entering them in the list of the untrustworthy with serious violations, and strengthen information disclosure, and complete coordination and cooperation mechanisms such as information sharing, investigation and handling reports, and operational guidance between the market regulation and intellectual property management departments. In the process of daily supervision of trademark agency activities, the parties' obligations to cooperate are clarified, and methods such as interviews and opinions are fully used to further enhance work efficiency. (Articles 20-26)

(5) Improve the measures for dealing with illegal acts of trademark agents

Article 68 of the Trademark Law and Article 88 of the Regulations for the Implementation of the Trademark Law refines the illegal acts of trademark agency, including assisting the malicious application for registration of trademarks related to emergencies, public figures, public opinion hotspots, etc., bribing or transferring benefits to personnel engaged in trademark registration and management, employing personnel who have been engaged in trademark registration and management in violation of practice restrictions, false publicity to deceive the public, and helping the client to transfer a registered trademark applied for in bad faith when he knows or should have known, Acts such as knowing or should have known that the client was abusing the trademark right but still accepting the client's entrustment, as well as instructing the client to abuse the trademark right, are clearly included in the scope of supervision. Intensify the supervision of trademark agency business through the Internet, enumerate typical illegal acts, and set corresponding penalties to prevent vicious competition. The relevant departments have decided to stop accepting trademark agencies to handle trademark agency business and resume accepting business and other handling measures. Improve the restrictive requirements for practice, and clarify that during the period when a trademark agency is stopped from accepting trademark agency business or fails to properly handle the uncompleted trademark agency business, the person in charge of the trademark agency, the person directly responsible for it, and the shareholders and partners with management responsibilities shall not appoint the new person in charge, shareholder or partner of the trademark agency, and prevent the evasion of punishment through the establishment of the new agency through the "dual governance" of the agency and personnel. At the same time, it stipulates the supervision responsibilities of the intellectual property management department, as well as the disciplinary requirements and accountability of personnel engaged in trademark registration and management, and the trademarks involved in violations of laws and disciplines shall be strictly reviewed, supervised and managed in accordance with the Trademark Law and relevant laws and regulations, and dealt with in a timely manner. (Articles 37-39)

In addition, the provisions also clarify that if laws and regulations have other provisions on the handling of illegal acts in the business activities of trademark agencies, such provisions shall prevail; In addition to complying with laws and regulations and these Provisions, law firms and lawyers engaged in trademark agency business shall also comply with other relevant national regulations; Institutions or individuals other than trademark agencies engaged in trademark agency business and other related activities in violation of these Provisions shall be dealt with with with reference to these Provisions. (arts. 40-42)

After implementation, the provisions will fundamentally reverse the problems of disorderly development and weak supervision of the trademark agency industry, and better meet the needs of the high-quality development of the trademark industry.