On July 26, 2016, the State Administration for Industry and Commerce (SAIC) published the “Opinion on Pushing Forward the Reform to Facilitate Trademark Registration Procedure” (the Opinion), making such reform its priority for the year 2016 - 2017.
As part of this reform process, the SAIC also published, on August 31, 2016, the “Interim Regulation on Commissioning Local AIC or Market Supervision Departments to Accept Trademark Registration Applications” (Interim Regulation), which came into force since September 1, 2016.
Generally speaking, these Opinion and Interim regulation aim to broaden the externalisation of the trademark examination work, both formal and substantial.
The exponential increase of trademark applications in China (from 766,319 in 2006 to 2,835,566 in 2015) put a huge pressure on the CTMO to keep up with the examination workload. Over the years, the CTMO accumulated a backlog of pending applications, as it was common to wait for 2 to 3 years before a trademark can be examined and published. The CTMO recruited more and more staff to cope with the problem and, finally, decided in July 2014 to externalise the examination work by outsourcing to a Cooperation Centre for Trademark Examination, especially set up in Beijing.
The Cooperation Centre was entrusted with the task of verifying whether an application file is complete, but also whether the trademark is in compliance with the law and does not harm prior rights. However, this Centre soon became itself under time pressure, which had a negative impact on the quality of the work. Applicants complain about their applications being rejected for the most trivial reasons, without any possibility to rectify a clerical mistake or clarify, because the examiner, pressed by the time, does not use the "examination notice" procedure, yet expressly provided in the revised trademark law.
It is therefore hoped that the outsourcing strategy announced in the Opinion will improve the efficiency of the trademark examination. Such extension will consist in setting up pilot trademark acceptance offices and trademark examination cooperation centres outside Beijing.
Two local trademark application acceptance offices have already been created at Ya’an in Sichuan Province and Taizhou in Zhejiang Province in 2016 as a pilot project. More offices may be considered, depending on the operation status of the pilot offices and the demands. Meanwhile, trademark examination cooperation centres outside Beijing to perform the substantial examination in a satisfactory manner will have to be closely monitored.
The CTMO intends also promote the method of online application (which is provided in article 22 of the law). In practice, this method was available only to trademark agencies. In the future, any applicant for trademark registration, renewal, assignment, cancellation and modification will be able to submit the application online with the office. In 2017, it will be possible to file a trademark either online, or directly at the CTMO, or through local trademark application acceptance office (if there is any).
The CTMO intends to be able to issue the notice of acceptance for a domestic trademark application within 3 months (instead of 6 month) from the date of application. For trademark modifications, renewal and assignment as well as other follow-up procedures, the applicant will have the right to ask for an expedited examination when the circumstances (such as the existence of pending administrative or judicial proceedings) make it necessary.
Another welcome improvement announced by the Opinion concerns the certified registration certificate for a registered trademark. As an alternative, the CTMO will provide a stamped print-out of the trademark data base as proof for the trademark registration status. This new certificate may either be issued on-site at the CTMO service hall or be issued and mailed out by courier within 5 days from the date of request. Certificates for international trademark registrations can be issued in the same way.
The Office also promises to improve user experience of its public trademark search portal by upgrading its online search, application and publication systems.
Concerning the examination of international trademark, the Opinion announces a change in the examination procedure by promoting the "sole-examiner" system (while, currently, the decision of the examiner needs to be supervised and confirmed by a higher level examiner).
The same approach of "sole-examiner" will also be tried in opposition procedures, but only for simple and straightforward cases. This will expedite matters. However, in more complex cases, the CTMO will initiate group discussion in order to improve the examination quality and consistency of decisions.
In that regard, another welcome approach of the CTMO, will be to enhance trademark supervision by using mega data, cloud computing as well as other information-based means so that decision may be made with all information available to the decider. Such information can be the trademark squatting or counterfeiting history of a party concerned. Illicit trademark agency conducts for disciplinary purposes will also be made available.
Finally, the CTMO released on July 12 and August 23 and later on September 19 of 2016, three batches (3,220 items in total) of acceptable entries for goods and services, other than those of the “Nice Classification for Similar Goods and Services”. Currently, it is sometimes difficult for applicant to find in the Chinese classification of goods and services something that corresponds exactly to their activity. It is hoped that the examination of goods and services, which is part of the formal examination process, will be facilitated.