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Practical Tips for Trademark Protection in China

作者:Nina Li 浏览:90 发表时间:2019-09-22 00:00:00 来源:Published in Landslide, Vol. 12, No. 1, September/October 2019, by the American Bar Association

Compared with most of the western countries, the trademark protection history in China is relatively short and the trademark law and the practice have been constantly evolving since the first trademark law came into effect in 1983. Due to the differences on laws and protection systems, people outside of the country have difficulty understanding the trademark protection situation in China. This article would like to share some of the practical tips which are very important but may not be widely known outside of China.

 

Subclasses are adopted in China

Like many other countries, China uses NICE classification.  However, a key difference in Chinese trademark practice is subclasses. Chinese Classification Table for Similar Goods and Services (Classification Table) is the main criteria that examiners in China adopt in determining whether goods/services are similar. The Classification Table is mainly based on NICE Classification, but also includes nearly 2,000 items of goods and services that are commonly used in China but not included in the NICE Classification. Such goods and services include “hair mousse” in class 3, “refrigerator deodorant” in class 5, “mashed potato” in class 29, and “housekeeping service” in class 45.

 

Foreign applicants often ask why some identical/similar marks have co-existed in the same class. The reason is, according to the Classification Table, their designated goods/services are dissimilar.

 

According to the Classification Table, goods and services in one class are divided into some groups. We call these groups subclasses. For example, within class 7, there are 54 subclasses and within class 25, there are 13 subclasses. Generally speaking, goods and services which fall into different subclasses are considered as dissimilar even though they belong to the same NICE class. For instance, “shoes” and “hosiery” are considered dissimilar, as are “caps” and “scarfs”, although they all fall into class 25. Furthermore, in some subclasses, goods and services fall into different parts are dissimilar. For instance, “thermal adjustment device” and “lightning arrester” are dissimilar although they both belong to the same subclass 0914. Therefore, in most of the cases, for a trademark registration in China, more subclasses it covers wider protection scope it obtains.

 

 

However, goods and services can also be similar even though they fall into different classes. For instance, “movements for clocks and watches” in class 14 is similar to “smart watch (data processing)” in class 9, “steel pipes” in class 6 is similar to “heating installations” in class 11.

 

When filing trademark applications or developing trademark protection strategies in China, it is important to take the above situations into consideration.

 

How important is availability search before filing

 

When people start to plan on filing a new trademark application in China, the first thing they should consider is availability search. With a reliable search report, the successful registration rate of the mark can be estimated relatively accurately. If prior identical/similar mark exists, necessary action can be taken beforehand.

 

When a new trademark application is blocked by prior mark(s), it is common to take necessary actions against prior marks, such as non-use cancellation, opposition, or invalidation. However, according to current practise in China, the average examination speed for appeals against provisional refusals are faster than examination speed for non-use cancellation or opposition cases. Besides, according to the Chinese trademark law, within one year from the time where a registered trademark is declared invalid, the trademark office shall not approve any application for registration of a trademark identical with or similar to the aforesaid trademark. If any decision on the non-use cancellation or opposition is appealed, it will take even longer time to wait for the results. Therefore, if an action such as non-use cancellation or opposition is initiated after the application date of a provisionally refused mark (not the date of the appeal against the provisional refusal), the National Intellectual Property Administration, PRC (CNIPA) probably won’t suspend the appeal case against the provisional refusal so as to wait for the results of the actions.

 

Besides, as the Beijing IP Court has also accelerated their examination speed for administrative lawsuit against adjudication on appeal of provisional refusals, to be on the safe side, the applicants are suggested to on the one hand try to keep the first application alive as longer as possible and on the other hand file a back-up application while waiting for the results of the non-use cancellation or opposition case. However, if such actions are taken against the prior conflicting marks before the filing date of the applicant’s own trademark application, the examiners in the appeal procedure against the provisional refusal concerning the said application is more likely to wait for the results. Therefore, if a pre-filing availability search is done and accordingly necessary actions can be taken against prior obstacles beforehand, the applicant usually will be in a better position.  

 

Single class vs. multi-class

 

Since the third amendment to the Trademark Law of People’s Republic of China took effect in 2014, multi-class application is acceptable in China. Before that, Chinese trademark office only accepts single-class applications. However, according to current practice in China, there are obvious disadvantages for filing applications in multi-class way.

 

First, for national multi-class trademark applications, divisional application is only applicable when the application encounters provisional partial refusal. For an application for international registration designating China, divisional application is impossible even if it is partially refused.

 

For national trademark application filed in multi-class way, when official notification of provisional partial refusal is issued, a divisional application form will be attached. If the applicant would like to divide the application, it can execute and submit that application form with the trademark office within 15 days as from receipt of the provisional partial refusal. Keep in mind, the division is only possible between the provisionally refused part and the provisionally approved part.

 

If an appeal is filed and a divisional application is also filed, the application with the provisionally approved items will generate a new application to be published with a new application number but reserved the original application date. For the purpose of appeal proceeding before the CNIPA, the original filing number will be reserved for the application in respect of the provisionally refused items due to the partial refusal.

 

If an appeal is filed and a divisional application is not requested, the whole application with the provisionally approved item cannot move forward to publication and registration before the CNIPA makes adjudication on the appeal.

 

However, if when the applicant would like to abandon the provisionally refused part, there is no need to appeal or divide the application. In that case, the provisionally refused part will be automatically deleted by the trademark office after the appeal and dividing deadline and the provisionally approved part will be published.

 

Second, if a multi-class application is opposed only in respect of part of the classes, divisional application is impossible. That means, the whole application including the non-opposed classes cannot proceed to registration but have to wait for the result of the opposition on the opposed classes.

 

Third, if assignment/renewal concerning a registration is needed, the whole multi-class application or registration must be assigned/renewed without division. In such circumstance, it will be problematic if the applicant/registrant would like to just assign or renew part of the classes.

 

Furthermore, the trademark office has simplified their formality requirements for applications. When the same applicant files applications in several classes, one executed power of attorney is sufficient. Separate powers of attorney for each application is not necessary any more.

 

Furthermore, there is no difference on the official fees whether the trademark applications filed in single-class way or multi-class way incur the same official fees.

 

Therefore, filing application in multi-class way in China won’t be a better choice. Instead, filing application in single-class way is recommended under the current Chinese practice.

 

Matters related to claiming Priority:

 

According to the Chinese trademark law, where an applicant, within six months from the date it applies for registration of its trademark for the first time in a foreign country, again applies in China for registration of one and the same trademark for the same kind of goods, it may, in accordance with any agreement concluded between the foreign country concerned and China or any international treaty to which both countries are parties, or on the basis of the priority principle mutually accepted, enjoy priority.

 

The CNIPA is very strict on the examination on priority. If priority is claimed for a new trademark application in China, make sure it meets the CNIPA’s requirements.

 

First, all the information should be kept in accordance with that appearing on the priority document, i.e., name and address of the applicant, print of the mark (with color or not), class, descriptions of designated goods/services.

 

Second, the original priority document is required. If the same cannot be submitted together with the Chinese application, it can be supplemented within three months as from the filing date of the application.

 

Since the CNIPA is also strict on the descriptions of designated goods and services, they will issue official notification for amendment of designated goods and services if the descriptions are non-stand. If priority is claimed for a Chinese application claiming foreign priority and if such notification is issued, the applicant can make amendment to the descriptions. If the descriptions of designated goods and services after amendment are accepted by the CNIPA, the application will be officially accepted and enter into substantive examination procedure. In such circumstance, the priority claimed will not be affected by the amendment of descriptions of designated goods and services. However, if such amendments are made before the application claiming foreign priority is filed, i.e., the application is filed with standard descriptions different from the priority, the priority claimed will not be accepted by the CNIPA.

 

Therefore, it is recommended to file a Chinese trademark application with the designated goods and services that are the same as those in the priority application, even if the descriptions are non-standard and make amendments later on during prosecution.

 

Something about non-use cancellation:

 

Recent years, the total number of new trademark applications in China has been increasing tremendously. The number of new trademark registration applications in China has ranked first in the world for 16 consecutive years until 2018. According to statistics of the CNIPA, for the year of 2018, more than 7.3 million new national trademark applications were filed in China.

 

However, we all know that trademark resources are not unlimited. Therefore, it is becoming more and more difficult to register a trademark in China. In such situation, non-use cancellation has become a cost-effective weapon to clear prior obstacles.

 

According to Chinese trademark law, after a mark is registered for three years, it is vulnerable to non-use cancellation which anyone can initiate. For non-use cancellation, the burden of providing evidences is totally on the registrant’s side. If no effective evidence can be provided and there is no justifiable reason for non-use of a registered mark, the registered mark will be cancelled accordingly.

 

To the CNIPA, what are the requirements for the use evidences and what would be effective use evidence to defend your marks being cancelled because of non-use for three consecutive years?

 

The following key information must be included in the use evidences:

User: The user of the mark should be the trademark owner or its authorized party;

Date: The use of the mark should be within the three years prior to the date on which the non-use cancellation is initiated;

Mark: The mark in use should be the same as registered.

Goods/Services: The goods/services on which the mark is used should be within the protection scope of the trademark registration.

Territory: China

 

Specific forms of use of a trademark on goods:

l  Attach the trademark to the goods, goods packaging, container, label, etc. or use it on the goods additional label, goods manual, instruction manual, price list, etc.

l  Use the trademark in trading instruments linked to the sale of goods, including use in goods sales contracts, invoices, bills, receipts, import and export inspection and quarantine certificates, customs declaration documents, etc.

l  Use the trademarks on media such as radio, television, or in publicly-published publications, as well as advertisements in the form of billboards, postal advertisements, or other advertising methods for trademarks or goods the trademarks are used.

l  Use of trademarks in exhibitions and fairs, including printed materials and other materials provided at exhibitions and fairs.

l  Other forms of use of trademarks that are in compliance with the law.

 

Specific forms of use of a trademark on services:

l  Use of trademarks directly at the services location, including introductory manuals for services, signage for services venues, store decoration, staff clothing, posters, menus, price lists, lotteries, office stationery, letterheads, and other items related to designated services.

l  Use of trademarks on documents related to services, such as invoices, remittance documents, service agreements, maintenance and repair certificates, etc.

l  Use of trademarks on media such as radio and television, or published in publicly issued publications, as well as advertisements in the form of billboards, postal advertisements, or other advertising methods for trademarks or services the trademarks are used.  

l  Use of trademarks in exhibitions and fairs, including printed materials and other materials provided at exhibitions and fairs.

l  Other forms of use of trademarks that are in compliance with the law.

 

Use of trademarks in the following situations is not considered as use in legal sense:

l  Announcement of trademark registration information or declaration of trademark registrant's exclusive right to use its registered trademark.

l  Use not in public trading fields.

l  Use as a complimentary gift.

l  Transfer or license behavior only without actual use.

l  Symbolic use just for the purpose of maintaining trademark registration.

 

Therefore, it is recommended for trademark registrant to keep sufficient use evidences. Evidences in diversified forms, long period and extensive geographic scope in China would be more persuasive to the examiners in non-use cancellation procedures.

 

As the Chinese market is becoming more attractive and more important for foreign business, it is crucial to protect their trademark right in an effective way. Developing better trademark protection strategies and maintaining the stability of registered trademark rights will provide foreign business with more favorable opportunities in China. 



https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2019-20/september-o

Practical Tips for Trademark Protection in China
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地址:北京市海淀区知春路63号51号楼(卫星大厦)1506室 
邮编:100190
电话:010-62966619
传真:010-62983448
网址:www.ipmarch.cn
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