The trademark owners have been hoping for an expedited examination process, making it possible for the trademarks to get registered quickly for protection in China particularly when the trademarks need quick protection in light of the pressing need for the businesses to carry out the vital marketing plan and operations and put ongoing extremely grave trademark counterfeiting and infringement to an end and the urgent need for the governments to protect public interest involving trademark use.
The good news is that on January 14, 2022, CNIPA (China National Intellectual Property Administration) announced Measures on Fast-Track Examination of Trademark Applications for Trial Implementation (the Fast-Track Measures).
The Fast-Track Measures, which take effect on January 14, 2022, have been formulated to improve trademark examination, adequately accommodate the differentiated needs of trademark owners and expedite examination of trademarks, use of which involves national interest, public interest or major strategies for regional development.
I: Trademarks Eligible for Fast-Track Examination
According to Article 2 of the Fast-Track Measures, requests for fast-track examination can be filed for the trademarks used under the following circumstances:
1. The trademark is related to the names of major national or provincial projects, major programs, major scientific and technological infrastructure, major sport events, major exhibitions etc. and it needs urgent trademark protection;
2. During the period of major public emergencies such as major natural disasters, major accidents and disasters, major public health emergencies, major social security emergencies etc. and use of the trademark is directly related to response to such public emergencies;
3. It is necessary to facilitate high-quality economic and social development and advance the implementation of the Guidelines for Building a Powerful Intellectual Property Nation ;
4. It is of practical significance for national interest, public interest or major strategies for regional development.
II: Formality Requirements for Fast-Track Examination
The trademarks for fast-track examination need to meet the following formality requirements:
1. Unanimous of consent of the applicants;
2. Electronic application
3. Word marks only
4. Non-collective trademarks or non-certification trademarks
5. Designated goods or services are closely related to the public emergencies outlined in Article 2 of the Fast-Track Measure and are standard terms listed in the Classification of Goods and Services
6. No priority claims
Meanwhile, the paper copies of the following documents need to be submitted to CNIPA:
1. Application Form for Fast-Track Trademark Examination
2. Documents demonstrating the eligibilities for Fast-Track Trademark Examination outlined in Article 2 of the Fast-Track Measures
3. Letter of Recommendation issued by the competent authorities under the central and state government , the provincial government or the general office of the provincial government
III: Procedure for Fast-Track Trademark Examination
CNIPA shall complete the fast-track examination within 20 working days after accepting and approving the request for fast-track examination.
During the fast-track examination, CNIPA may terminate the fast-track examination and conduct the trademark examination according to the routine procedure if one of the following circumstances occurs.
1. The trademark application requires amendments, clarifications or corrections, or there are trademarks filed on the same date undergoing examination;
2. After filing the request for fast-track examination, the applicant submits request for suspension of trademark examination;
3. There are other circumstances making fast-track examination impossible.
After the decisions have been made on the trademarks subject to fast-track examination, the relevant parties may lodge oppositions against the trademarks preliminarily approved and published on the Trademark Gazette or file request for review of total rejection or partial rejection.CNIPA will introduce separate measures on fast-track examination of trademarks, which are likely to cause significant adverse effects.
The Fast-Track Measures are subject to interpretations by CNIPA and the Trademark Office under CNIPA is responsible for conducting the fast-track trademark examination.
Fast-track trademark examination is available before the trademark authorities in jurisdictions across the world such as USPTO (US Patent Office), EUIPO (European Union Intellectual Property Office), JPO (Japan Patent Office), UK-IPO (UK Intellectual Property Office ), CIPO (Canadian Intellectual Property Office), KIPO (Korean Intellectual Property Office). Special and specific conditions and requirements are set for trademarks for fast-track examination before these authorities.
Fast-Track Trademark Examination in the World
Fast-track examination is also available in many other countries and introduced particularly after the outbreak of the COVID-19 pandemic to offer timely, speedy and sufficient protection to the businesses involved in offering pharmaceuticals, medical devices (such as diagnostic tests, ventilators), or medical protective equipment (such as sanitary masks for protection against viral infections, disposable gloves for medical purposes), medical services or medical research services for the prevention, diagnosis, treatment, or cure of COVID-19.
At present, it takes about 9 months for a trademark to undergo examination and mature into registration at CNIPA in China, provided that everything goes well during the examination process. However, the process can take longer if the trademark encounters amendments, clarifications or corrections and/or subsequent opposition proceedings.
After the outbreak of the COVID-19 pandemic, CNIPA has conducted fast-track examination for trademarks used on the goods or services to be launched to cope with the emergencies caused by the COVID-19 pandemic.
CNIPA has implemented the Fast-Track Measures on a pilot basis. The Fast-Track Measures are also relevant to the foreign brand owners if the they have trademarks to be used under the circumstances in Article 2 of the Fast-Track Measures and needing quick and urgent protection, for example, the brand owners are participants in major national or provincial projects, major programs, major scientific and technological infrastructure, organizers or sponsors of the major sport events, major exhibitions etc. or users of trademarks on goods or services launched to help tackle major public emergencies in China. The foreign brand owners need to coordinate and work closely with the local counsels, their subsidiaries and/or business partners in China to prepare and obtain the necessary documents such as the Letter of Recommendation from the competent authorities at the state or provincial level to support the requests for fast-track trademark examination.
For the brand owners and trademark practitioners, it is worthwhile monitoring the implementation and practice of the Fast-Track Measures and considering filing the request for fast-track examination to benefit from the Fast-Track Measures when the occasion arises.
Fast-track examination for opposition or invalidation proceedings is not included in the current Fast-Track Measures. Hopefully, CNIPA may include oppositions or invalidations as well as trademarks (1) being infringed; (2) subject to pending litigation; and/or (3) needed for a foreign registration in the revised Fast-Track Measures when fast-trademark examination for such proceedings and trademarks is highly necessary and particularly determines the outcome of the trademark infringement litigations pending at the courts.