Introduction Background Opinion

Introduction

On July 26 2016 the State Administration for Industry and Commerce (SAIC) published its Opinion on Pushing Forward the Reform to Facilitate Trademark Registration Procedure, making such reform its priority for the year 2016 to 2017.

As part of the reform process, on August 31 2016 the SAIC also published the Interim Regulation on Commissioning Local Administration for Industry and Commerce or Market Supervision Departments to Accept Trademark Registration Applications, which came into force on September 1 2016.

The opinion and interim regulation are generally intended to broaden the scope of external trademark examinations – both formal and substantive.

Background

A rapid increase in the number of trademark applications in China between 2006 (766,319 applications) and 2015 (2,835,566 applications) put intense pressure on the China Trademark Office (CTMO) to keep up with its examination workload. Over the years, the CTMO accumulated a backlog of pending applications and it became common for applicants to wait two to three years for a trademark to be examined and published. To combat this, the CTMO recruited increasing numbers of staff before eventually, in July 2014, it decided to outsource examinations to the Cooperation Centre for Trademark Examination in Beijing.

The centre was established to verify whether an application is complete and whether the trademark is compliant with the law and does not harm prior rights.

However, the centre also became subject to time pressures, which negatively affected the quality of examinations. Concerns were raised that applications were being rejected for trivial reasons without opportunity to rectify clerical mistakes or offer clarification, because time-pressed examiners did not follow the "examination notice" procedure set out in the revised trademark law.

Opinion

Outsourcing It is hoped that the new outsourcing strategy set out in in the Opinion on Pushing Forward the Reform to Facilitate Trademark Registration Procedure will improve the efficiency of the trademark examination process. The strategy consists of establishing pilot trademark application acceptance offices and trademark examination cooperation centres outside Beijing.

Two local trademark application acceptance offices have already been established in Ya'an, Sichuan Province and Taizhou, Zhejiang Province as a pilot project. More offices may be considered, depending on the operation status of the pilot offices and the level of demand. Meanwhile, trademark examination cooperation centres outside Beijing must be closely monitored if they are to complete substantive examinations in a satisfactory manner.

Applications procedure The CTMO also intends to promote the online method of application provided in Article 22. Previously, this method was available only to trademark agencies. However, it will soon be possible to submit applications for trademark registration, renewal, assignment, cancellation and modification online. It will thus be possible to file a trademark online, directly at the CTMO or through a local trademark application acceptance office.

The CTMO intends to be able to issue the notice of acceptance for a domestic trademark application within three months (instead of six) of the application date. For trademark modifications, renewals and assignments, as well as other follow-up procedures, the applicant will be entitled to request an expedited examination when the circumstances require (eg, pending administrative or judicial proceedings).

Registration certificate The opinion introduces a welcome improvement with regard to the certified registered trademark certificate. As an alternative to the certificate, the CTMO will provide a stamped print-out of the trademark database as proof of the trademark's registration status. The new certificate may be issued on site at the CTMO service hall or mailed out by courier within five days of the request date. Certificates for international trademark registrations can be issued in the same way.

Online system The CTMO also promises to improve user experience of its public trademark search portal by upgrading its online search, application and publication systems.

Sole examiner The opinion introduces a change in the examination procedure for international trademarks by promoting the 'sole-examiner' system, to replace the system which requires that an examiner's decision be authorised by a higher-level examiner.

To expedite proceedings, the sole-examiner system will also be tried in simple and straightforward opposition procedures. However, in more complex cases, the CTMO will initiate group discussions in order to improve the quality of examinations and consistency of decisions.

Information availability The CTMO will also enhance trademark supervision through the use of mega data, cloud computing and other information-based means, to ensure that all information is available before a decision is made. Such information includes:

  • the trademark squatting or counterfeiting history of a concerned party; and
  • illicit trademark agency conduct for disciplinary purposes.

Classifications Finally, on July 12 2016, August 23 2016 and September 19 2016, the CTMO released three respective batches (3,220 total items) of acceptable entries for goods and services, other than those of the Nice Classification for Similar Goods and Services. It can be difficult for applicants to find the Chinese classification of goods and services that corresponds exactly to their own goods and services. It is hoped that this will facilitate the examination of goods and services.

For further information on this topic please contact Paul Ranjard, Yongjian Lei or Nan Jiang at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email (ranjard@wanhuida.com, leiyongjian@wanhuida.com or jiangnan@wanhuida.com). The Wan Hui Da Law Firm & Intellectual Property Agency website can be accessed at www.wanhuida.com.

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