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News Update on China Trademark Practice

Rick Z. TAN and Jady Y. XU | Dec 28, 2016

1. Suspension of trademark review might be turned away
It is said that the Trademark Review and Adjudication Board (TRAB) has been taking action to improve efficiency of the trademark review procedure. In the past, TRAB is most likely to suspend a trademark review case if the stability of rights of the cited trademarks are under challenge (such as under examination of non-use cancellation), and the decision of the trademark review will not be issued until the cited trademark rights are stable. However, recent cases show that TRAB do NOT always wait for the decision of the cited trademarks which are under attack. As long as the non-use cancellation, opposition, invalidation or other procedures against the cited trademarks are filed after the new trademark filing date, the cited trademarks shall be deemed to remain in force (constituting obstacles to the new trademark application) and shall not affect the process of the trademark review even if all those procedures are still pending. The move is aimed at reducing the processing time of the trademark review from 12-18 months to 4-6 months.

Our suggestion:
In view of the above, we recommend that an availability search should be done before a new trademark application is filed. If identical or highly similar older trademarks are found, applications of non-use cancellation, opposition or invalidation shall be filed before the new trademark application.

2. Official filing receipt will not be issued until rectification is accepted
Rectification is commonly seen in a trademark application, especially when the designated goods/services are not standard according to NICE classification. In the past, upon receiving the application document, the Trademark Office will firstly issue an official filing receipt, and if there is anything that is not in compliance with the formality requirements, the Trademark Office shall notify the applicant to make supplements or amendments. The applicant would have three chances in total to make supplements or amendments to the specified parts and deliver them back to the Trademark Office within 30 days from the date of receipt of the notification. Since the implementation of the new Trademark Law in 2014, official filing receipts will not be issued until rectification (if any) is accepted and the applicants will have only one chance to make supplements or amendments. In absence of response or failing to meet the requirement, the application will be deemed abandoned.

Our suggestion:
We all know that the scope of protection of a trademark is limited by the goods/services it designated. However, it is difficult to find corresponding terms for many new goods/services in NICE classification nowadays. In this regard, many applicants tend to designate non-standard goods/services, which is a major cause of trademark rectification.

It is noteworthy that designating non-standard goods/services is NOT completely impossible, though this requires a large amount of materials to prove that the new goods/services have been commonly seen in the market and have a significant social influence, there are some successful cases in practice. However, for the moment, there is still risk in overcoming the rectification by persuading the examiner to accept the non-standard goods/service. Therefore, in order to reduce the risk of being abandoned in the case of rectification arising from the non-standard goods/services problems, we recommend that firstly, using standard goods/services to obtain an earlier filing date and keep the trademark application alive; secondly, in order to obtain a more precise protection scope of the trademark, we could file a fresh trademark application designating the non-standard goods/services, and try to persuade the examiner to accept the non-standard goods/services if a rectification notice is issued.
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