The current PRC Trademark Law was revised and took effect on 1 May 2014. The revised law brought about significant changes to the previous trademark regime. Recently, in order to guide the PRC State Trademark Office (“STO”) and the PRC Trademark Review and Adjudication Board (“TRAB”) to conduct the trademark examination according to the PRC Trademark Law, the PRC State Administration for Industry and Commerce revised and published the Standards for Trademark Examination and Review (“Standards”). Below are the key changes of the Standards which might be of interests for foreign companies:
1. Determination of the Interested Parties
Under the PRC Trademark Law, only prior right holders and relevant interested parties are allowed to apply to the STO for the opposition against the registration of a preliminarily approved trademark or request the TRAB to declare the invalidation of a registered trademark on the basis of relative refusal grounds (such as conflict with prior rights). However, the law does not further define the term “interested parties”. The Standards now clarify that interested parties refer to the licensees and/or the legitimate legal successors of prior trademark rights and other prior rights such as copyrights etc., the pledgee of prior trademark rights and other parties that can prove to have interests in the form of prior trademark rights or other prior rights.
2. Examination Standards for Audio Trademarks
Under the PRC Trademark Law, apart from visual signs, sounds are now allowed to be registered and protected as trademarks in the PRC. The Standards introduce the criteria in examination of trademark registration for sounds. In order to apply for an audio trademark, a sample of the sound is needed. For musical sounds, such trademark shall be described in the form of musical notation or numbered musical notation together with descriptions in words. For non-musical sounds, the applicant only needs to submit the descriptions of the sounds as the sample of the trademark. In addition, the applicant shall provide the ways of using the audio trademarks, such as “use at the beginning of services etc.” When determining whether an audio trademark is in conflict with prior registered trademarks, the examiners shall not only check the similarities with the prior audio trademarks but also need to check the similarities with prior visual trademarks. According to the Standards, an audio trademark will be deemed as similar to or identical with prior trademarks if:
(1) the auditory sense or the overall musical image of two audio trademarks is similar to or identical with each other, leading to confusion among the public as to the origin of the goods or as to a certain relationship between the trademarks; or
(2) the words or other elements contained in an audio trademark are similar to or identical with visual trademarks, leading to the confusion among the public as to the origin of the goods or as to a certain relationship between the trademarks.
3. The Examination Standards for Preemptive Registration by Trademark Squatters
Under the PRC Trademark Law, the application of a trademark squatter shall be rejected as long as the owner of the trademark has evidence proving that the trademark squatter obviously knows the trademark through its contractual, commercial or other relation with the trademark owner. This new clause prevents trademark squatters from preemptively registering others’ prior used trademarks. The Standards further clarify that to invoke the above clause, the following conditions shall be met:
(1) The trademark owner has used its trademark on the Chinese market prior to the application date of the trademark in dispute. The prior use includes the sales of products bearing the trademark, the provision of services with the trademark and the promotion of the trademark on the Chinese market;
(2) The trademark squatter obviously knows the trademark through its contractual, commercial or other relation with the trademark owner, or though a certain relationship. Contractual or business relationship refers to the sales, OEM, franchise (license), investment, sponsorship, joint organisation of events, business visits or negotiation relationship, advertisements agent relationship, as well as relative relationship and subordinate relations (such as employees) etc.;
(3) The designated goods/services of the trademark in dispute are similar to or identical with those of the trademark owner’s prior used trademark; and
(4) The trademark in dispute is similar to or identical with the trademark owner’s prior used trademark.
In addition to the above changes, the Standards add or amend the standards for applying the examiners’ opinions during the trademark examination by applying the revised articles of the new PRC Trademark Law and also by removing or adding some examples. All these revisions enlarge and improve the contents relevant to trademark examination standards and provide specific trademark protection guidance not only for the examiners to follow but also for the right owners’ reference.