The new Trademark Law of People’s Republic of China has come into effect since May 1, 2014, and the new Implementation Regulations of the Trademark Law of People’s Republic of China, which was published by Legal Affairs Office of State Council on April 30, 2014, has come into effect since May 1, 2014 as well. After twice public collections of suggestions, the final version of the new Regulations for Implementation gives clear guidance on the main issues such as examination time limit, division of application, international registration, trademark agency, etc.
Period for submitting supplemental materials
In the earlier draft of the Implementation Regulations, the period for submitting supplementary materials in the cases of review of refusal, opposition and invalidation was proposed to be shortened from 3 months to 30 days, which has caused great concerns and worries for many trademark applicants and attorneys, especially for foreign applicants, who would have more difficulty to collect all evidences within such short period, not to mention that some of the evidences shall be notarized and legalized, or they may need to cooperate with their partners in China to collect evidences. Fortunately, such amendment was deleted in the final version of the Implementation Regulations, and the original period of “3 months from the filing date” was maintained.
Meanwhile, Article 11 of Implementation Regulations also indicates that the above period for submitting supplemental materials will not be included in the examination time limit. Therefore the examination period of the above cases, taking opposition case as an example, is expected to take around 18 months from the filing to the issuance of decision, namely 6 months (period for submitting supplemental materials by both parties) plus 12 months (regular examination time limit).
Division of application
In accordance with Article 22 of the Implementation Regulations, the trademark applicant can apply for division of application in case of partial refusal.
However, except for the above situation, whether such division of application can be applied under other circumstances was not mentioned. Thus it may be concluded that the applicant cannot apply for the division of application voluntarily under other circumstances, such as assignment, and all the designated classes under the subject application shall be assigned as a package to the same assignee. Considering this possible inconvenience, it seems that multi-class application might be less flexible in practice, which needs to be taken into consideration by the applicant at the time of filing the application.
The new Trademark Law allows the application for sound mark, and the new Implementation Regulations indicates that the following requirements shall be met for filing sound mark:
- Stating that the type of trademark is “Sound mark” in the application form;
- Submitting the acceptable sample of sound;
- Describing the sound mark, and explaining the usage of the sound mark. The description of the sound mark shall include musical notes or numbered musical notation, together with description in text; if the sound cannot be described in musical notes or numbered musical notation, it shall be described in text.
The new Implementation Regulations has added the provision of oral hearing for cases at TRAB in Article 60, which indicates that TRAB may decide to hold oral hearing upon the parties’ request or based on the situation of the case. This would provide additional chances for parties to present their arguments and evidences in front of examiners, especially for cases involving complicated facts or legal issues.
In accordance with Article 31 of the new Implementation Regulations, the trademark assignment recordal shall be filed by both the assignor and assignee jointly, instead of by assignee alone in the past, thus though not specifically mentioned, it is believed that the Powers of Attorney executed by both parties might be required when the assignment recordal is represented by the trademark agency.
International registration with extension to China
The new Implementation Regulations now has a whole Chapter for the international registration, which clarify the specific requirements and rules. The following issues are especially important to notice:
- The Article 22, regarding the division of application, is not applicable for the extension request of international registration;
- The Article 31, regarding the assignment recordal filed by both assignor and assignee jointly, is not applicable for the extension request of international registration.