How to work with China’s Trademark Office

The revision to the Trademark Law had several changes designed to speed up proceedings, especially registrations and oppositions. What has been the result so far?

Rachel ZHANG: With the implementation of the revised Trademark Law, we’ve had the feeling that the trademark applications are being processed much quickly than before. For a smooth application, the applicant can get a registration certificate in no longer than 12 months, usually a nine-month examination period plus three-month publication period. This is indeed quite effective for a Trademark Office (TMO) that receives more than 2 million filings in a year. It has brought lots of benefits for overseas companies who need to get registration certificates to get their business started in China.

On the other side, in order to make sure the process runs effectively and in a timely manner, the TMO has adjusted their examination process. They’ve postponed the issuance of filing receipts until the examination of goods description and formality of the filing. With such a change, the TMO saves itself quite a lot of time. If there are any minor defects in the filing, which in the past can be fixed by an amendment request, the TMO will now usually issue a non-acceptance notice to the applicant. This puts the pressure on the applicant and the examiners can also be exempt from the nine-month examination deadline. That’s why in many cases, the TMO only gives the client one chance to amend their questioned goods description. If the amended descriptions are not acceptable, a non-acceptance notice is very likely to be issued.

These rigid changes have made filing trademark application sometimes a risky thing if the applicant’s products are quite new and cannot be found in the Nice Classification Book. Therefore, at least for the coming year, the applicant needs to pay attention to this requirement and try to use as many Nice descriptions as possible.

For those accepted applications, in order to complete the examination as soon as possible, the TMO has recruited quite a number of new examiners to take care of the huge filing volume. These new examiners, who only have a couple of years of experience, tend to be conservative with their examinations. For likelihood of confusion issues, if it is a borderline case, examiners tend to issue a rejection notice as they don’t want to risk to allow a confusingly similar mark get registered. Because of the nine-month limitation, the examiners lack the time to give careful examination to an application where several similar prior rights are located.

For oppositions, because the evidence submission period is exempted from the examination time limit, the TMO has about 18 months (12 months plus two 3-month evidence submission periods). As the revised Law came into effect last May, we haven’t received many opposition decisions so far. But we believe the TMO has more time for the examination of opposition cases than for new ­applications.

Maintaining a high examination processing speed and at the same time a relatively rational examination standard might not be an easy task for the Chinese Trademark Office, which sees more than 2 million new filings each year. Such situation might be around for a couple of years, but we believe when the filing numbers start to stabilize or slightly decrease, the situation will change.

After almost a year with the revised law, have the changes achieved their intended goals?

Shanshan DU: We are happy to see that most of the changes achieved their intended goals. Here are some of the noteworthy positive developments:

1) The examination period has been shortened considerably and is now much more predictable. All the cases as filed have a clear timeline, which is very helpful for us when devising a strategy for the client’s cases in different procedures;

2) Oppositions can no longer be filed by a party who does not have any interest in the opposed mark, which prevents the phenomenon where a party uses the opposition procedure to prolong another party’s trademark registration;

3) A trademark will be registered right away if the opposition is not upheld, which will help applicants to obtain the registration early;

4) A copy of the license agreement is no longer required for recordal purposes, which makes the recording process much easier;

5) An application for renewal of a trademark may be filed twelve months before the expiry date, which helps the registrants to get the certificate early before the expiration;

6) A lot of sound marks are now being applied for registration, so it is foreseeable that the protection of sound marks will be stronger than before; and

7) Bad faith is now an important factor to be considered in opposition or other kinds of procedures, which makes trademark squatters hesitate before filing.

From the revised Law, we can see that it tends to give stronger protection to the real trademark owner and it will be more difficult to make money through trademark squatting. Consequently, some requirements on the applicants are much stricter than before. For example, in an opposition case, compared to the previous requirements, the opponent now has to file an original power of attorney, the proof as the prior right owner or interested party and the preliminary proof of the prior right. Otherwise, the opposition may be rejected at the formality examination stage and there is even no opportunity of amendment. It is not uncommon that after the opponent receives the notice of non-acceptance, the three-month opposition period has passed and the opposed mark has matured for registration.

Another bright spot of the revised Trademark Law is that multi-class applications are now available. If the application is rejected on partial goods/services, the applicant may choose to file a divisional application, so the approved part can be registered, while the rejected part will go into the procedure of review of refusal. However, the official fee is not reduced and is still charged per class, the same as the single-class application. Furthermore, after the mark is registered, it cannot be divided, which may cause some inconvenience to the registrant.

Since the revised Law has been in effect for less than one year, we are still waiting to see more practical cases showing the effect of the changes. The improvement of the practice needs the participation of examiners, trademark attorneys and their clients.

Do you have tips on how to successfully and effectively engage with the TMO and Trademark Review and Adjudication Board (TRAB)?

Yue LI: The revised Trademark Law and the revised Implementation Regulations of the Trademark Law of China took effect on May 1 last year. The revised Law and Regulations bring many changes in respect of both formalities issues and substantive issues to which trademark holders should pay attention in order to successfully and effectively engage with the TMO and the TRAB. Here are some things to keep in mind:

The revised Regulations require that in addition to a signed power of attorney, a copy of the applicant’s identification document must be submitted when filing various applications. For a company, an identification document refers to an official document indicating the existence of the company (such as a certificate of good standing or existence in the USA). For an individual, a copy of his or her passport is needed. This document is very important, because it must be submitted when filing applications and cannot be supplemented.

The revised Law allows multi-class applications. However, the introduction of a multi-class application does not bring desired benefits expected by applicants. First, there is not a deduction in official fee for filing a multi-class application. Second, a multi-class application cannot be easily divided. The revised Law only allows an applicant to divide a trademark application when it is partially rejected, so that the application in connection with the approved goods or services will be assigned with a new filing number and published, and an appeal to the rejection against the application in connection with the rejected goods or services with the original filing number can be filed with and examined by the TRAB. A division of a multi-class application is not allowed in any other circumstances, such as opposition, record of name and address change, recordal of assignment, cancellation, withdrawal. Please think twice before you decide to file a multi-class application.

The opposition proceedings under the revised Trademark Law are different from the ones under the previous law in several respects. One of the differences is that if TMO makes a decision in favor of the applicant rather than the opponent, the trademark application will be approved for registration and the opponent will not have opportunities to delay registration of the application by filing an appeal to the opposition with the TRAB. Under the revised Law, however, the opponent can file an application for invalidating the registration with the same reasons and facts as those raised in the opposition with the TRAB. If the registration was invalidated by the TRAB, the registration will be deemed to have never existed.

In China, assignment of a trademark application or registration needs to be recorded at the Trademark Office in order to claim the ownership of the trademark application/registration. The revised Trademark Law requires that the recordal of the assignment of an application or registration be filed by both the assignor and the assignee, rather than by the assignee alone as under the old law. As a result, the assignor should file necessary documents in order to record the assignment of a trademark application or registration as well. Please do not delay the recordal of the assignment when it is impossible for the assignor to provide necessary documents.

In the past, TMO required that the original trademark license agreement should be submitted when recording the license of a trademark registration and that the agreement must contain certain contents accepted by TMO. This posed several challenges. First, trademark owners usually did not wish to submit the original license agreement due to confidentiality concerns and second, they had to revise and re-sign their license agreement in order to satisfy TMO’s requirements. The revised Law no longer requires submission of a trademark license agreement when recording the license of a trademark registration. This brings conveniences to both the trademark owners and licensee.

Under the revised Law and Regulations, in some proceedings such as an appeal to opposition against a trademark application and an application for invalidating a registration, parties involved can request a suspension of the examination of the appeal to the opposition and the invalidation application pending the disposition of an action against a conflicting right involved. Once the status of the conflicting right becomes stable, the examination of the appeal to the opposition and the invalidation application will resume. For an appeal to the rejection against a trademark application, the applicant can also request a suspension of the appeal pending the disposition of an action against a conflicting right. The examiners will usually approve the suspension request if an action against the conflicting right has been taken.

The revised Law and the revised Regulations bring many changes. Trademark owners need to adapt to these changes in order to better protect their rights no matter whether these changes are convenient are not.