The provision that introduces multiple-class trademark applications is one of the highlights of the third revision of the Trademark Law which became effective in May 2014.
Multiple-class trademark applications are a common practice in developed countries and are very popular among applicants seeking trademark application under the Madrid System, an international trademark application system. China’s adoption of a multiple-class trademark application system complies with prevailing international practice and also facilitates future business operations for relevant enterprises. According to mainstream sources, multiple-class trademark applications appear to offer the following advantages for trademark administration management: (i) saving registration number resources; (ii) reducing examination workload; (iii) facilitating trademark search, analysis and categorization through higher unified search standards; and (iv) simplifying administrative tasks.
Nevertheless, what is conducive to trademark administrative management is not necessarily what is favored by applicants. A number of applicants who rushed to file early applications before they understood the pros and cons of the new system may encounter unexpected trouble later on.
Before searching for an answer to the question of whether or not the new multiple-class trademark application system is actually beneficial to trademark applicants, we need the answers to the following questions concerning the new system: (1) is it economically efficient for applicants? (2) does the examination process save time? (3) is the registration application process streamlined? (4) has trademark management become easier?
Truth 1: Application fees have not been reduced.
According to established practice in countries that implement a multiple-class trademark application system, a discount is applied to additional class(es), while the first class applied for is charged at a standard rate, a practice that is designed to encourage applicants to file multiple-class trademark applications. By contrast, according to China’s current standard rate, a multiple-class application will be charged on a class basis rather than an application basis, at the rate of RMB 800/ class; and an additional fee of RMB 80 will apply to each extra item of goods. In other words, the newly implemented system is not cheaper for applicants.
Truth 2: Examination of applications will take at least as much time as before
Taking an application for registration of a single trademark in three classes as an example; in the event of a rectification or opposition procedure concerning one class, further examination of the other two classes will be delayed until the rectification or opposition procedure is completed.
Multiple-class applications take as much time or more time compared with single-class applications. Even if there is no rectification or opposition during the entire application process, there is no specific provision under the new Trademark Law that reflects any difference between time spent examining a single-class application and time spent examining a multiple-class application.
Truth 3: The examination procedure will become more complex.
As mentioned above, the examination procedure will be prolonged if a multiple-class application needs to be rectified or enters into opposition procedures. If the application is partially rejected, the applicant will need to file a petition to split the application and apply for reconsideration of the partial refusal decision.
Truth 4: Trademark management may become even more difficult.
Once a multiple-class trademark registration application is granted, it is impossible to split the registered trademark by class. Consequently, in the case of trademark transfer or licensing, the trademark concerned must be transferred or licensed as a whole, because it is impossible to choose a specific class based on actual needs. Moreover, it is still uncertain whether an application for renewal of a registration in a specific class will be approved, because the Trademark Office has not yet provided clear regulations on this matter.
Because applicants have very limited knowledge of multiple-class applications, and because incomplete information has been provided by the mainstream media, a great number of multiple-class applications have already been filed. The results will only become apparent once the smoke has cleared. Since the factors described above will inevitably exert a negative influence on multiple-class trademark applications, applicants are advised to act cautiously and only after understanding the new system.