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Interpretation of General Trademark Registration Applications in China

26

NOV

2021

About six months ago the China National Intellectual Property Administration (CNIPA) set a goal to shorten the average examination period of trademark registration applications to less than 4 months and shorten the examination cycle of general trademark registration applications from 8 months to 7 months by the end of 2021. To achieve the goal, the CNIPA recently issued an opinion on interpretation of general trademark registration applications in November 2021. The purpose is to accurately define the scope of general trademark registration applications in order to achieve the reform target of reduction of examination cycle of these general applications according to the trademark law and regulations.

General trademark registration applications are applications that are filed with ready documents, and can be either published for opposition or totally refused after examination without subsequent opposition or review procedures.

The applications filed with ready documents means they smoothly pass the formality examination and do not encounter any office actions such as amendment.

The applications which shall be either directly published for opposition or totally refused after examination refer to those not engaged in other special procedures and circumstances such as having other applicants’ identical or similar applications that are filed on the same day, receiving the CNIPA’s examination opinions that require the applicants to clarify or make corrections, or in a variety of situations where examination shall be suspended. And after the applications are published for opposition, they shall not be opposed by other parties. On the other hand, if the applications are totally refused, the applicants accept the refusal and do not file a review. Without the opposition and review procedures, the trademark registration procedure shall be ended.

In details, the Opinion provides seven conditions that general trademark registration applications shall meet:

1. The trademark registration applications are filed in line with the official requirements. The full payment of official fee is made online within the specified period (from Sept. 29, 2021, the payment shall be made within 7 days upon receipt of notice). And the CNIPA does not launch any amendment procedure;

2. They do not fall into the situation where other applicants file identical or similar trademark applications on the same filing date;

3. The applicants do not initiate any administrative review or litigation procedures to change the CNIPA’s formality examination decision;

4. The CNIPA does not need to deliver any trademark documents to the applicants by publication;

5. During substantive examination, the CNIPA does not issue any examination opinions, or requires the applicants to clarify and make correction, or suspends examination. In short, the CNIPA can either arrange publication of the application for opposition or refuse the application directly after examination.

6. In case of a total refusal, the applicant does not file a review.

7. During the publication period for opposition, no opposition is filed against the application.

To better illustrate general trademark registration applications, the CNIPA lists eleven situations that do not qualify general trademark registration applications as follows:

  1. The unconventional trademarks, including collective and certification marks (including geographic indications), three-dimensional marks, color combination mark, sound marks, etc.. For unconventional marks, the CNIPA shall carry out examination on some special issues, e.g. the qualification of applicants of collective and certification marks, management rules for collective and certification marks, the quality standards of the goods and services of collective and certification marks, the capacity for check and test; functionality examination of three-dimensional marks; examination of the manner of use and evidence of use of color combination marks and sound marks. The CNIPA may issue examination opinions to the applicants and discuss the applications by the examination panel to make a decision. It will take much more time than examination of conventional marks.
  2. The CNIPA initiates an amendment procedure in formality examination, if the application documents are not ready. The amendment will prolong the examination period.
  3. The applicants pay official fee by remittance where the CNIPA has to take time to track and verify the payment. The official fee is normally paid online now and the CNIPA can confirm the online payment after one business day. But if the applicants pay by bank remittance and send the payment notices to the CNIPA, it will take more time to check and settle the fees.
  4. Other applicants happen to file identical and similar applications on the same date. If so, the applications shall first go through the examination procedure of same-day applications. The CNIPA shall first notify each applicant to submit evidence in order to show use of the marks before the filing date. If the applicants do not submit any use evidence, the CNIPA shall then notify the applicants to negotiate and submit a written agreement on whose application shall proceed. If the applicants do not wish to negotiate or the negotiation is not successful, the CNIPA will notify the applicants to draw lots to decide whose application survives and refuse other applications. It is obvious that a lot of time will be spent on the special procedures of collection of use evidence, negotiation and drawing lots.
  5. In case the CNIPA decides not to accept a trademark application during the formality examination, the applicant initiates an administrative review and/or litigation which finally changes the CNIPA’s formality examination conclusion. After the administrative review and/or litigation changes the CNIPA’s decision of non-acceptance, the CNIPA shall accept and examine the application. The time spent on the administrative review and/or litigation will certainly prolong the examination cycle of a trademark application.
  6. The CNIPA have to deliver trademark documents to the applicants by publication. If the CNIPA fails to deliver the documents to the applicants by post, in person or electronically, delivery by publication on Trademark Gazette shall be arranged. According to the Trademark Law, the documents are deemed served 30 days after publication.
  7. During the examination, the CNIPA has to require the applicant to make clarification or correction. Under the circumstance, the CNIPA will issue an examination opinion and require the applicants to reply. The additional procedure for issuing the opinion, waiting for the applicant’s reply and examining the reply will increase the time for examination.
  8. During the examination, the applicants request suspension of examination or the CNIPA decides to suspend examination ex officio. If a prior mark is refused, opposed, cancelled or invalidated by an administrative decision or litigation ruling and its status is not final but decisive to the examination of an application, or if a prior mark is in the process of change of name/address, assignment or correction and after the process is completed the mark will be in the same name as that of the application, the applicant can request the CNIPA to suspend the examination until the administrative decision or litigation ruling takes effect or the process of change, assignment and correction is completed. Besides, the CNIPA can suspend examination ex officio for administration of trademark examination in a variety of circumstances: if the CNIPA shall wait to confirm the priority right claimed by the application or a prior mark to be cited against the application; if the CNIPA shall discuss to make a decision when the goods/service of an application are not standard or the Chinese characters in the mark are irregular; if the CNIPA suspects an application violating Article 4, 10, 11 of the Trademark Law; if the examination of an application is difficult, complicated and important; if the CNIPA finds the application documents are forged or receives a complaint in this regard, etc..
  9. The CNIPA makes a partial refusal decision. According to the Trademark Law, the CNIPA cannot directly publish the preliminarily approved part but has to wait to see if the applicant files a division application or a review application within the specified time. After the applicant files a division application, the CNIPA shall assign a new application number to the divided and approved part and publish it for opposition. If the applicant files a review on the partial refusal and does not file a division application, the preliminarily approved part will not be published until the review and/or subsequent appeal procedure are concluded. If the applicant accepts the partial refusal, the CNIPA shall wait for expiration of the period for filing a review to publish the preliminarily approved part. More time is needed to confirm the status of the application.
  10. The applicant files a review application on the CNIPA’s refusal decision. If the applicant does not file a review, the refusal takes effect and there is no further procedure. But if the applicant files a review, the application proceeds in the review procedure and examination will be extended.
  11. The application is opposed by other party in the 3-month publication period. If no opposition is filed, the application will be registered and published for registration and the registration procedure will end. But if other party files an opposition, the application proceeds in the opposition procedure and examination will be extended.

Currently it takes about 4-5 months for the CNIPA to examine a general trademark registration application in China. With the following 3-month opposition period, the registration cycle of a general trademark registration application is about 8-9 months. But the delay in examination happens due to various reasons, for example, the trademark application No. 9389740

in class 12 in the name of TOYOTA MOTOR CORPORATION recently draws attention because it was filed on April 26, 2011 and published for opposition on Nov. 13, 2021.

Given the CNIPA’s goal to shorten the whole registration cycle of general trademark applications to 7 months by the end of 2021, bearing the interpretation newly released, if trademark applicants wish to enjoy the benefit of fast examination, we suggest meeting the seven conditions indicated by the CNIPA. On the contrary, if the applicants need to slow down the examination pace of their trademark applications, it is advisable to get into the situations that do not allow a speedy examination.

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Tel 86-10-5920 8888
Fax 86-10-5920 8588
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