Recently, the China National Intellectual Property Administration (CNIPA) has adjusted and supplemented the Trademark Examination and Trial Standards (hereinafter referred to as the Standards) to form the Trademark Examination and Trial Guidelines (hereinafter referred to as the Guidelines). The Guidelines will come into effect from January 1, 2022. The Guidelines is divided into two parts, with the upper part being the "Formal Examination and Affairs ", which is a systematic arrangement and optimization of the formal examination standards and work procedures of various trademark businesses; and the lower part being the “Trademark Examination and Trial”, which are substantive standards for trademark examination and trial, equivalent to the original Standards.
I. The upper part of the Guidelines has comprehensively sorted out and standardized the terms and expressions involved in trademark examination and trial; it has detailed the general requirements of formal examination, the whole process of various trademark applications including registration, change, transfer, cancellation, Madrid application, opposition and review, etc.; and it has also clarified the acceptance and service of documents, trademark file management and other trademark affairs.
II. The adjustments in the lower part of the Guidelines mainly include:
1. Adding the content of "examination and trial of malicious trademark registration applications that are not intended for use", explaining the meaning, judgment standards, application of "malicious applications not for the purpose of use" in conjunction with cases.
2. Enriching the content of the examination and trial of "signs that shall not be used as trademarks": distinguishing the application of provisions under different circumstances for trademarks involving national and ethnic names; supplementing the application of "deceptive, easy to cause the public to misunderstand the quality and other characteristics of the goods or the origin of the goods"; revising the interpretation and judgment of "with other adverse effects"; improving the examination and trial provisions of trademarks containing geographical names.
3. Amending the content of the examination and trial on "lack of distinctive features of trademarks": clarifying the theoretical basis for prohibiting registration for marks lack of distinctive features for the first time; changing the judgment on the distinctive features of trademarks obtained through use from "the perception of the relevant domestic public" to "the perception of the relevant public"; adding "other situations lacking distinctive character", such as "daily language", "Internet buzzwords and Internet popular meme” etc. stipulating that “for a trademark which is composed of independent text part and independent other elements, if the text part does not have distinctive features, the trademark as a whole shall be deemed lacking distinctive features".
4. Enriching the content of the examination and trial of well-known trademarks: improving the principle of recognition on demand; placing more emphasis on the principle of good faith; explaining how to re-protect well-known trademarks that have been recognized before; accepting evidence of use formed by non-traditional business methods and non-traditional media; specifying the definition of "translation" of other people's well-known trademarks, and 'clarifying the specific circumstances of "confusion and misunderstanding".
5. Revising the content of the examination and trial of "the preemptive registration of another person's prior used trademark by a specific related party": removing the restriction that "prior use" shall be only in the Chinese market; adding "proximity of the business address of the applicant and the prior user" as one of "other relationships".
6. Amending the content of the examination and trial of "damage to the prior rights of others": replacing "the unique name, packaging and decoration of well-known goods" with "the name, packaging and decoration of goods with a certain influence adding "geographical indications" as an independent type of prior rights; clarifying the protection of other prior rights and interests such as the names of works and characters in works.
7. Supplementing the content of the examination and trial of "preemptive registration of a trademark that has been used by others and has a certain influence": clarifying that a trademark that has been used by others includes "a trademark that is not filed for registration or is not renewed at the expiration of the registration period; removing the restriction that the trademark must be used in China; clarifying that if a sign shall not be used as a trademark, it cannot be recognized as a "trademark that has been used and has a certain influence" even if it has been used; changing the time point for determining whether a trademark has a certain influence to "before the application date of the disputed trademark".
8. Improving the content of the examination and trial of "obtaining trademark registration by fraud or other unfair means" in Article 44(1) of the Trademark Law: adding "trademark opposition and review can apply the provisions of this article by reference”; adding " if other provisions of the Trademark Law can be applied to reject the registration or declare invalidation of the disputed mark, the provisions of this article shall no longer apply, except for obvious malice”.
9. Improving the content of the examination and trial of cancellation of registered trademarks: including the e-commerce transaction documents and transaction records in the determination of trademark use; adding judgment standards for "use of mark on non-standard goods names", " the actual use of goods constitutes use on approved goods despite changes of Classification of Goods and Services” and "the use of mere export ".
10. Clarifying that the examination report is a part of the examiner's discretion in the substantive examination procedure of trademark registration, "the period of the examination report shall not be counted as the period of trademark examination", and clearly enumerating the 18 circumstances under which the examiner issues the examination report.