Before the amendment to the Chinese Trademark Law (2013), the China Trademark Office only accepted single-class trademark applications. However, after the implementation of the new law on May 1, 2014, applicants gained the option to file multi-class trademark applications. While multi-class filings may seem advantageous for simplifying trademark portfolio management, in practice, their effectiveness in mainland China is not always as satisfactory as expected. Below, we outline some key reasons why filing a single-class trademark application might be preferable.
1. No Fee Discounts for Additional Classes
Despite the introduction of multi-class filings, China National Intellectual Property Administration (CNIPA) does not offer any discount on the official fees for additional classes beyond the first. Whether for trademark registration, change of name or address, assignment, renewal, or filing a review of refusal, review of opposition decision, the official fee remains fixed per class. This means that applicants must pay the same amount for each class, with no cost-saving benefits for filing multiple classes under a single trademark application.
2. Office Actions: Potential Delays for Entire Application
If CNIPA issues an office action on a multi-class trademark application (e.g., requiring amendments to non-standard goods or unclear mark samples), the entire application can be delayed - even if the issue pertains to only one class. For example, if an office action affects only one class of goods or services, the application for all classes will be suspended until the applicant resolves the issue. If the applicant's response to the office action is not accepted, the whole application could be rejected, forcing the applicant to refile for all classes. It will waste valuable time, effort, and money.
3. The Same-Day Application Procedure: Delays Caused by Conflicts
In some cases, multiple applicants may apply for similar trademarks on similar goods and/or services on the same day. If this occurs, CNIPA will first issue notifications requiring the applicants to provide evidence of prior use. If no applicants submit valid evidence, CNIPA will notify the applicants to negotiate an agreement on whose application will proceed. If no negotiations or negotiations fail, CNIPA will notify the applicants to conduct a random draw to determine which applicant’s mark will proceed.
If one of the classes in a multi-class trademark application is involved in such a conflict, it can delay the entire application. Compared to normal 4-5 month examination period, the same-day application process can take up to 2 to 3 years to resolve, significantly impacting the examination speed of the whole multi-class application.
4. Partial Refusals: The Risk of Entire Application Delays
If part of a multi-class application is refused by CNIPA, applicants may opt to file a review of the refusal. However, if the applicant does not file a division application to separate the refused classes, the entire application will be held up until the review process and the potential subsequent administrative litigation process is complete. The part of the application that was initially accepted will not be published for opposition until the review concludes, resulting in a substantial delay in the registration process.
5. Opposition Procedures: Delay Across All Classes
Once a multi-class trademark application is published for opposition, third parties may oppose it in one or more of the classes. If opposition is filed against any class in the multi-class application, the entire application will be delayed as it undergoes the opposition and the potential subsequent review process and administrative litigation. The classes that were not opposed will not be published for registration until the opposition is concluded, further extending the timeline for securing trademark rights.
6. Challenges with Partial Assignment of Multi-Class Registrations
Under current regulations, CNIPA does not allow partial assignments of multi-class trademarks. If a party wishes to transfer ownership of a mark in only one class of a multi-class registration (e.g. class 9, while keeping classes 16 and 42) to another party, they must go through a complex process:
Step 1: File an assignment application to transfer ownership of the multi-class registration from one party to two parties (e.g., from Party A to both Party A and Party B as co-owners);
Step 2: Party A and Party B as co-applicants file a new application for the same trademark in the specific class (e.g., class 9);
Step 3: After the new application is registered, Party A and Party B apply to remove class 9 from the original multi-class registration;
Step 4: An assignment application is filed to transfer the ownership of the original multi-class registration in the remaining classes to Party A;
Step 5: An assignment application is filed to transfer the ownership of the new trademark in the specific class to Party B.
This process can be cumbersome, costly, and risky, especially if CNIPA issues office action requiring transfer of other similar mark(s) together in Step 1, or refuses the new application in Step 2 if there are conflicting applications for similar marks. The complexity and risks involved make partial assignments of multi-class registrations both cumbersome and time-consuming.
Conclusion: Why a Single-Class Application May Be Preferable
Given the challenges and inefficiencies associated with multi-class trademark filings in China, it may be more advantageous for applicants to file single-class trademark applications. The lack of fee reductions for additional classes, the risk of delays from office actions, opposition, and the challenges of assignment procedures all contribute to the complexities of multi-class filings.
To avoid these inconveniences and streamline the registration process, we recommend filing single-class trademark applications in China, especially if the applicant’s portfolio is still in development or if there are concerns about the timing and flexibility of multi-class registrations.
Suggestions for Improving Multi-Class Filings
For multi-class trademark applications to become more attractive, CNIPA should consider the following changes:
- Reduce official fees for additional classes beyond the first.
- Allow more flexibility in the division of multi-class applications and registrations.
- Streamline the process for resolving conflicts, such as the same-day application procedure, to prevent unnecessary delays.
Until these improvements are made, applicants may find that filing single-class trademark applications remains the most efficient strategy in China.
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