Industry Hot Spots | Heavy! New regulations on the supervision of trademark agents were issued

2022-11-07

Recently, the "Provisions on the Supervision and Administration of Trademark Agency" (hereinafter referred to as the "Regulations") was issued, which is an important measure to resolutely implement the 20th National Congress of the Communist Party of China on "strengthening the legal protection of intellectual property rights", and is an effective means to improve the intellectual property agency management system and improve the level of regulatory standardization.

The "Provisions" adhere to the problem-oriented, focus on the current trademark agency industry low entry threshold, excessive institutions, non-standard operation and management, uneven service levels and other outstanding problems, and further refine the provisions on institutional personnel, management systems, code of conduct and other aspects, from the source to improve the overall service quality and development level of the industry. Establish and improve the filing system for trademark agencies, and clean up agencies that have not carried out business for a long time and occupy industry resources by improving the filing procedures, so as to promote the formation of a benign development pattern of the industry. At the same time, in order to facilitate the agency to handle the record, it is stipulated that the trademark agency shall not be required to provide the information that can be obtained through the government information sharing platform.

The "Provisions" further standardize the behavior of trademark agency, stipulate the basic principles of engaging in trademark agency business, the obligations that should be performed and the publicity of the basic matters of the agency, require the trademark agency to establish and improve the business management system and business file system, and strengthen the professional ethics and professional discipline education of employees.

The "Provisions" enrich the means of supervision, improve the coordination and cooperation mechanisms between the market supervision department and the intellectual property management department, such as information sharing, investigation and punishment notification, business guidance, etc., and refine the relevant provisions on the supervision of trademark agents.

The "Provisions" improve the legal liability of trademark agents for illegal acts and strengthen legal deterrence. Combined with practice, the illegal acts of trademark agency listed in the Trademark Law of the People's Republic of China and its implementing regulations are detailed to enhance operability. Clarify the illegal circumstances of engaging in trademark agency business through the Internet. At the same time, it stipulates the supervisory responsibilities of the intellectual property management department, as well as the disciplinary requirements and accountability of personnel engaged in trademark registration and management.

The promulgation of the "Provisions" provides strong legal support for standardizing trademark agency behavior, improving the quality of trademark agency services, promoting the healthy development of the trademark agency industry, and creating a standardized, orderly, fair competition and vibrant trademark agency market environment.

The Provisions will come into force on December 1, 2022. The State Administration for Market Regulation and the State Intellectual Property Office will take the issuance and implementation of the Provisions as an opportunity to continue to strengthen the governance, supervision and management of the trademark agency industry, guide trademark agencies to operate in accordance with laws and regulations, promote the high-quality development of the trademark agency industry, and maintain a standardized, transparent, fair and just, honest and honest trademark registration management order.

Provisions on the Supervision and Administration of Trademark Agency

(Decree No. 63 of the State Administration for Market Regulation promulgated on October 27, 2022, effective as of December 1, 2022)

Chapter I: General Provisions

Article 1 These Provisions are formulated in accordance with the Trademark Law of the People's Republic of China (hereinafter referred to as the Trademark Law), the Regulations for the Implementation of the Trademark Law of the People's Republic of China (hereinafter referred to as the Trademark Law) and other relevant laws and regulations in order to regulate the conduct 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 trademark agency industry.

Article 2 A trademark agency may, in the name of the client, handle the following matters within the scope of its authority in accordance with the law:

(1) Application for trademark registration;

(2) Alteration, renewal, assignment or cancellation of trademarks;

(3) trademark opposition;

(4) Cancellation or invalidation of trademarks;

(5) Trademark reexamination and handling of trademark disputes;

(6) Other trademark matters.

For the purposes of these Provisions, the term "trademark agency" includes service organizations and law firms engaged in trademark agency business that have been registered by the registration authority for market entities in accordance with law.

Article 3 Trademark agencies and trademark agency practitioners shall abide by laws, regulations and relevant state provisions, follow the principle of good faith, abide by professional ethics, standardize professional conduct, improve the quality of trademark agency services, and safeguard the legitimate rights and interests of clients and the normal order of the trademark agency market.

For the purposes of these Provisions, the term "trademark agency practitioners" includes the person in charge of the trademark agency and the staff of the agency appointed by the trademark agency to undertake the trademark agency business.

Trademark agency practitioners shall abide by laws and regulations, have a good credit status, have good conduct, be familiar with trademark laws and regulations, and have the ability to engage in trademark agency business in accordance with the law.

Article 4 The trademark agency industry organization is a self-regulatory organization of the trademark agency industry.

Trademark agency industry organizations shall strictly exercise self-discipline in the industry, formulate industry self-discipline norms and disciplinary rules in accordance with the provisions of the charter, strengthen professional training and professional ethics and professional discipline education, organize and guide trademark agencies and trademark agency practitioners to engage in agency business in accordance with the law, and continuously improve the service level of the industry.

The intellectual property management departments shall strengthen the supervision and guidance of trademark agency industry organizations in accordance with the law, and support trademark agency industry organizations in strengthening industry self-discipline and standardization.

Trademark agencies and trademark agency practitioners are encouraged to participate in trademark agency industry organizations in accordance with law.

Chapter II Filing of Trademark Agencies

Article 5 Where a trademark agency engages in the agency business of trademark matters under the jurisdiction of the State Intellectual Property Office, it shall file with the State Intellectual Property Office in a timely manner in accordance with the law.

The validity period of the trademark agency's filing is three years. If it is necessary to continue to engage in agency business after the expiration of the validity period, the trademark agency may apply for renewal of the record within six months before the expiration of the validity period. The validity period of each renewal of the ICP filing is three years, calculated from the day after the expiration of the validity period of the original ICP filing.

Article 6 The filing information of a trademark agency includes:

(1) Business licenses or law firm practice permits;

(2) The name, address, contact information, unified social credit code of the trademark agency, and the names of the person in charge, shareholders and partners of the non-listed company;

(3) The name, ID number, and contact information of the trademark agency practitioner;

(4) Other information that shall be provided by laws and regulations and the provisions of the State Intellectual Property Office.

The relevant information that the State Intellectual Property Office can obtain through the government information sharing platform shall not require the trademark agency to provide it repeatedly.

Article 7 If there is a change in the filing information of a trademark agency, it shall file the change with the State Intellectual Property Office within 30 days from the date of the actual change or the date of registration and approval by the relevant competent authority, and submit the corresponding materials.

Article 8 Where a trademark agency applies for cancellation of registration of a market entity, fails to renew it upon the expiration of the validity period of the record, or decides not to engage in trademark agency business on its own, or has its business license or law firm's practice license revoked, or the State Intellectual Property Office decides to permanently stop accepting its trademark agency business, it shall, after properly disposing of the unfinished trademark agency business, apply for cancellation of the record with the State Intellectual Property Office.

If a trademark agency has any of the circumstances provided for in the preceding paragraph, the State Intellectual Property Office shall mark it in the trademark online service system or the trademark agency system, and shall no longer accept the application for trademark agency business submitted by it, except for handling the unfinished trademark agency business.

A trademark agency shall, within 30 days from the date of receipt of the decision to revoke or revoke the decision to revoke or permanently suspend the acceptance of the trademark agency business, properly handle the unfinished trademark agency business in accordance with the provisions of laws and regulations and the contract, notify the client to handle the change of trademark agency, or sign a business transfer agreement with other trademark agencies that have filed with the client with the consent of the client.

Article 9 Where the materials submitted by the trademark agency for filing, alteration, renewal or cancellation of filing comply with the requirements, the State Intellectual Property Office shall handle the application in a timely manner, notify the trademark agency and publicize it to the public in accordance with the law.

Chapter III Code of Conduct for Trademark Agents

Article 10 A trademark agency engaged in trademark agency business shall not adopt fraud, inducement or other improper means, and shall not harm the interests of the state, the 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, senior manager, employee, etc., nor shall it engage in the above-mentioned acts in disguised form through the establishment of a separate market entity or through a market entity with which it has an affiliated relationship.

Article 11 A trademark agency shall actively perform its management duties, standardize the professional conduct of its trademark agency practitioners, establish and improve management systems such as quality management, conflict of interest review, malicious application screening, complaint handling, confidentiality management, personnel management, financial management, and file management, supervise the compliance of its trademark agency practitioners with laws, regulations, and industry norms, and correct any problems found in a timely manner.

Trademark agencies shall strengthen the education of professional ethics and professional discipline for their trademark agency practitioners, organize business learning, and provide conditions for them to participate in business training and continuing education.

Article 12 A trademark agency shall hang its business license or law firm's practice license in a conspicuous position in its domicile or place of business.

Where a trademark agency engages in trademark agency business through the Internet, it shall continuously publicize the information recorded in the business license or law firm's practice license, such as the name of the institution, business premises, and the scope of business, as well as other trademark agency business filing information, in a conspicuous position on the Home of its website or on the main page of its business activities.

Article 13 When a trademark agency engages in trademark agency business, it shall sign a trademark agency entrustment contract in writing with the client, stipulating the rights and obligations of both parties and other matters in accordance with the law. The trademark agency entrustment contract shall not violate laws and regulations and relevant national regulations.

Article 14 When a trademark agency is entrusted to handle trademark agency business, it shall conduct a conflict of interest review, and shall not accept the entrustment of both parties with a conflict of interest in the same case.

Article 15 A trademark agency shall, in accordance with the requirements of the client, handle the application for trademark registration or other trademark matters in accordance with the law; In the process of agency, the relevant provisions on the protection of trade secrets and personal information shall be observed.

If the trademark applied for registration by the client may not be registered under the Trademark Law, the trademark agency shall clearly inform the client by means of a written notice or other means.

If a trademark agency knows or should know that the trademark applied for registration falls under the circumstances specified in Articles 4, 15 and 32 of the Trademark Law, it shall not accept the entrustment of the client.

In accordance with Article 27 of the Trademark Law, a trademark agency shall strictly perform its agency duties, check the matters declared by the client and the materials provided by the client for trademark registration application or other trademark matters, and promptly inform the client of the progress of the handling of the entrusted matters and send legal documents and materials, without delay without justifiable reasons.

Article 16 Trademark agency practitioners shall undertake trademark agency business according to the assignment of the trademark agency, and shall not accept the entrustment in their own name.

Trademark agency practitioners are not allowed to engage in trademark agency business in more than two trademark agencies at the same time.

Article 17 The relevant documents submitted by the trademark agency to the State Intellectual Property Office shall be stamped with the official seal of the agency and signed by the relevant trademark agency practitioners.

Trademark agencies and trademark agency practitioners are responsible for the trademark agency business that they seal and sign.

Article 18 A trademark agency shall file the case files and relevant materials of the business it undertakes in a timely manner and keep them properly.

The records of the trademark agency shall be true, accurate and complete.

Article 19 Trademark agencies shall comply with relevant laws and regulations, follow the principles of voluntariness, fairness, reasonableness and good faith, and take into account economic and social benefits.

Chapter IV Supervision of Trademark Agency

Article 20 The intellectual property management department shall establish credit files for trademark agencies and trademark agency practitioners.

The State Intellectual Property Office collects and sorts out the information in the credit file, and carries out the grading and classification evaluation of the trademark agency industry. Local intellectual property rights management departments, market regulation departments, and trademark agency industry organizations shall assist in efforts to collect and organize credit file information.

Article 21 The following information shall be recorded in the credit files of trademark agencies and trademark agency practitioners:

(1) Information on administrative penalties received by trademark agencies and trademark agency practitioners;

(2) Information on the supervision and inspection of the trademark agency;

(3) Information on trademark agencies and trademark agency practitioners joining trademark agency industry organizations and receiving disciplinary action from trademark agency industry organizations;

(4) Information on the trademark agency's entry into the list of abnormal business operations or the list of the untrustworthy with serious violations;

(5) Other information that can reflect the credit status of the trademark agency.

Article 22 A trademark agency shall submit an annual report in accordance with the relevant provisions of the State.

Article 23 Where a trademark agency intentionally infringes on intellectual property rights, submits an application for trademark registration in bad faith, harms the public interest, engages in a serious illegal trademark agency act, and is vile in nature, the circumstances are serious, and the harm to society is relatively large, and it receives a heavier administrative punishment, it shall be entered into the List of the Untrustworthy with Serious Violations in accordance with the "Measures for the Administration of the List of the Untrustworthy with Serious Violations for Market Regulation" and other relevant provisions.

Article 24 The intellectual property administration department shall supervise and inspect the acts of trademark agencies and trademark agency practitioners in accordance with the law, and may consult and reproduce relevant materials in accordance with the law, question the parties or other units and individuals related to the case, and require the parties or relevant personnel to truthfully provide relevant materials within a certain period of time, and take other lawful, necessary and reasonable measures. Trademark agencies and trademark agency practitioners shall assist and cooperate.

Article 25 The intellectual property management department shall guide the trademark agency to lawfully engage in trademark agency business and improve the quality of services.

The intellectual property management department may, in accordance with its duties, interview trademark agencies or trademark agency practitioners who have violated laws and regulations by trademark agencies, submit opinions, and urge them to make timely corrections.

Article 26: The intellectual property management departments are responsible for the publication and publicity of information such as trademark agents, and complete coordination and cooperation mechanisms with the market regulation departments, such as information sharing, notification of investigation and punishment, and business guidance.

Chapter V Handling of Illegal Acts of Trademark Agency

Article 27 Under any of the following circumstances, it shall be an act of forgery, alteration or use of forged or altered legal documents, seals or signatures in the course of handling trademark matters as provided for in Article 68, Paragraph 1, Item 1 of the Trademark Law:

(1) Forging or altering official documents or seals of state organs;

(2) Forging or altering legal documents or seals of units other than state organs;

(3) Forging or altering signatures;

(4) Knowing or should know that official documents, legal documents, seals, or signatures are forged or altered, and still using them;

(5) Other situations of forgery, alteration, or use of forged or altered legal documents, seals, or signatures.

Article 28 In any of the following circumstances, it shall be an act of soliciting trademark agency business by means of slander against other trademark agencies:

(1) fabricating or disseminating false or misleading information that damages the commercial reputation of other trademark agencies;

(2) instigating or helping others to fabricate or disseminate false or misleading information, damaging the commercial reputation of other trademark agencies;

(3) Other situations in which trademark agency business is solicited by means of defamation of other trademark agencies.

Article 29 In any of the following circumstances, it shall be an act of disrupting the order of the trademark agency market by other improper means as provided for in Item 2 of Paragraph 1 of Article 68 of the Trademark Law:

(1) Knowing or should have known that the client had applied for registration by deception or other improper means, or had used information such as emergencies, public figures, and public opinion hotspots to maliciously apply for registration of a trademark that was harmful to socialist morality or had other negative effects, but still accepted the entrustment;

(2) Engaging in bribery or transfer of benefits to persons engaged in trademark registration and management, or obtaining information related to trademark registration that has not yet been made public, or requesting the transmission of materials involved in the case, in violation of regulations, in order to obtain improper benefits;

(3) Violating laws, regulations, and the relevant state regulations on practice restrictions by employing personnel who had been engaged in trademark registration and management, and delaying or refusing to correct their employment behavior after being notified by the intellectual property management department;

(4) Acting as an agent for different clients to apply for the registration of identical trademarks on the same or similar goods or services, except where the prior trademark has been invalidated at the time of application;

(5) Knowing or should have known that the transferred trademark is a registered trademark applied for in bad faith, but still helping the malicious registrant to handle the transfer;

(6) Falsely impersonating the official website, email address, telephone number, etc., of a state organ, or providing false information in the name of a staff member of a state organ to mislead the public, or providing materials related to trademark business to the client or collecting fees for improper benefits;

(7) Knowing or should have known that the client was abusing the trademark right but still accepting the entrustment, or instructing the trademark right holder to abuse the trademark right to seek improper benefits;

(8) Knowing or should have known that the client was using forged, altered, or fabricated false trademark materials, but still helping the client to submit them, or maliciously colluding with the client to produce or submit false trademark applications and other materials;

(9) Fabricating facts to report other trademark agencies to the competent authorities;

(10) providing services at a price lower than cost in order to squeeze out competitors;

(11) Other situations that disrupt the order of the trademark agency market by improper means.

Article 30 Under any of the following circumstances, it shall be an act provided for in paragraphs 3 and 4 of Article 19 of the Trademark Law:

(1) Where the client has applied for a registered trademark or handled opposition, invalidation and reexamination on behalf of the client, but the client's trademark has been rejected by an effective decision or ruling of the State Intellectual Property Office due to violation of the provisions of Articles 4, 15 or 32 of the Trademark Law, and the application for registration of the same or similar trademark is still submitted again on behalf of the client for the same or similar goods;

(2) Having handled other trademark business on behalf of the client, and still accepting the entrustment knowing that the client's trademark violates the provisions of Articles 4, 15 or 32 of the Trademark Law;

(3) Violating the provisions of paragraph 2 of Article 10 of these Provisions;

(4) Other circumstances provided for in paragraphs 3 and 4 of Article 19 of the Trademark Law.

Article 31: In any of the following circumstances, it is an act of soliciting business by means such as fraud, false publicity, misleading people, or commercial bribery:

(1) maliciously colluding with others or fabricating facts to induce the client to entrust them to handle trademark matters;

(2) Misleading clients in ways such as promising results or exaggerating the success rate of their own agency operations;

(3) Falsifying or altering honors, qualifications, or qualifications, deceiving or misleading the public;

(4) Obtaining trademark information by theft, bribery, fraud, coercion or other improper means, or disclosing, using or allowing others to use the trademark information obtained by the aforesaid means in order to seek transaction opportunities;

(5) Explicitly or implicitly speeding up the handling of trademark matters through abnormal means, or increasing the success rate of handling trademark matters, misleading the client;

(6) Bribing units or individuals by giving property or other means in order to obtain transaction opportunities;

(7) Other situations in which trademark agency business is solicited by improper means.

Article 32 Under any of the following circumstances, it shall be an act of accepting entrustment from both parties with a conflict of interest in the same trademark case as provided for in Paragraph 3 of Article 88 of the Regulations for the Implementation of the Trademark Law:

(1) Accepting the entrustment of both parties in a trademark opposition, revocation, invalidation case, or in a reexamination or litigation procedure;

(2) Applying for trademark registration on behalf of the client, and then filing an application for trademark opposition, revocation or invalidation of the same trademark on behalf of another person;

(3) Other situations of accepting representations from both parties with conflicts of interest in the same case.

Article 33 Where a trademark agency engages in trademark agency business through the Internet and commits any of the following acts, the provisions of laws and regulations such as the Anti-Monopoly Law of the People's Republic of China, the Anti-Unfair Competition Law of the People's Republic of China, the Price Law of the People's Republic of China, and the Advertising Law of the People's Republic of China shall prevail; where there are no provisions, the market regulation department is to give a warning and may impose a fine of up to 50,000 RMB; where the circumstances are serious, a fine of between 50,000 and 100,000 RMB is to be given:

(1) Using factors such as its customer resources, platform data, and the degree of dependence of other business operators on its trademark agency services to maliciously squeeze out competitors;

(2) Conducting false or misleading commercial publicity through methods such as fabricating user reviews or falsifying business volumes, to deceive or mislead clients;

(3) Affecting the normal operation of the trademark online service system, the trademark agency system, and so forth through electronic intrusion, unauthorized plug-ins, etc.;

(4) displaying a trademark with a major adverse impact through the Internet;

(5) Other illegal trademark agency acts carried out through the Internet.

Article 34 After the market regulation department investigates and preaches the illegal acts of a trademark agency in accordance with the provisions of Article 68 of the Trademark Law, it shall notify the State Intellectual Property Office of the investigation in accordance with the relevant provisions. If the State Intellectual Property Office receives the notification or discovers that a trademark agency has committed the first paragraph of Article 68 of the Trademark Law, and the circumstances are serious, it may, in accordance with the law, make a decision to suspend the acceptance of the trademark agency business for more than six months or even to permanently stop accepting the application, and make a public announcement.

Where a trademark agency has received three or more administrative penalties within two years due to illegal acts of trademark agency, it is a serious circumstance as provided for in the preceding paragraph.

If a trademark agency is stopped from accepting trademark agency business, during the period of suspension of business, or if it fails to properly handle the uncompleted trademark agency business in accordance with the provisions of paragraph 3 of Article 8 of these Provisions, 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 new responsible persons, shareholders or partners in the trademark agency.

Article 35 Where the decision of the State Intellectual Property Office to stop accepting the trademark agency to handle the trademark agency business has a time limit, and the time limit has expired and the illegal acts have been corrected, the business of the trademark agency shall be resumed and announced.

Article 36 Where a trademark agency engaged in trademark agency business fails to handle the filing, alteration, renewal or cancellation of the filing in accordance with the law, fails to properly handle the unfinished trademark agency business, or violates the provisions of Paragraph 4 of Article 15 of these Provisions, harms the interests of the client or disrupts the order of the trademark agency market, the State Intellectual Property Office shall notify it and record it in the credit file of the trademark agency.

Where a trademark agency has any of the circumstances described in the preceding paragraph, the market regulation department shall order it to make corrections within a set period of time; where corrections are not made at the end of the time period, a warning is given, and where the circumstances are serious, a fine of up to 100,000 RMB is to be given.

Article 37 The intellectual property management department shall improve the internal supervision system, and strengthen supervision and inspection of the implementation of laws and regulations and the observance of discipline by personnel engaged in trademark registration and management.

Personnel engaged in trademark registration and management must enforce the law impartially, be honest and self-disciplined, be loyal to their duties, and serve in a civilized manner, and shall not engage in trademark agency business or engage in or participate in profit-making activities in violation of regulations. The restrictions on the employment of personnel engaged in trademark registration and management after leaving their posts shall be implemented in accordance with or with reference to the Law of the People's Republic of China on Civil Servants and other laws and regulations and relevant national provisions.

Article 38 Where a person engaged in trademark registration and management neglects his duties, abuses his power, commits irregularities for personal gain, illegally handles trademark registration matters and other trademark matters, accepts property from a trademark agency or a trademark agency practitioner, and seeks improper benefits, he shall be dealt with in accordance with law; where a crime is constituted, criminal responsibility is pursued in accordance with law.

Article 39 The intellectual property administration department shall strictly examine, supervise and manage the trademarks involved in violations of law and discipline in accordance with the Trademark Law and relevant laws and regulations, and deal with them in a timely manner.

Article 40 Where laws and regulations have other provisions on the handling of illegal acts in the business activities of trademark agencies, such provisions shall prevail.

Article 41 In addition to complying with laws and regulations and these Provisions, law firms and lawyers engaged in trademark agency business shall also abide by other relevant provisions of the State.

Article 42 In addition to the trademark agency specified in Article 2 of these Provisions, other institutions or individuals engaged in trademark agency business or other activities related to trademark agency business in violation of these Provisions shall be handled with reference to these Provisions.

Article 43: These Provisions take effect on December 1, 2022.

Source: State Intellectual Property Office