LEGISLATION IN CHINA
applications are permitted, divisional applications will also be allowable if the initial applications encounter problems.
Addition of letter of examiner’s opinion for the applicant’s explanation
During examination, if the China Trademark Offi ce (CTMO) thinks it necessary for the applicant to explain or make an amendment to the content of the application, it can ask the applicant to make such an explanation or amendment, although the applicant’s failure to do so does not result in the abandonment of its application.
Explanation of timeframes for examination and review procedures
T e new amendment signifi cantly reduces examination and review times for all proceedings, as shown in Table 1.
As an example, the CTMO shall complete an examination of an application for registration within nine months of the receipt of the application documents. Where there is an opposition, the CTMO shall make a decision within 12 months of the date of expiration of the publication of the preliminarily approved mark. In special situations, an extension of six months can be approved.
Appeals to the TRAB are available but the strict 15-day appeal deadline, not extendable, remains unchanged. Moreover, according to the draſt regulations, the timeframe for supplementing additional arguments and evidence is shortened from three months to 30 days. T e TRAB’s decisions are still appealable to the court, within 30 days of receiving them.
Allowance of earlier fi ling of renewals
An application for renewal of the registration can be made within 12 months of the date of expiration; the old law stipulates six months.
Addition of articles on combating bad faith registration
T e new amendment incorporates the “principle of honesty and good faith” of Civil Law into Article 7, which stipulates that “when applying to register and use a mark, an applicant must abide by the principle of honesty and good faith”. However, it is looked at as a general principle and cannot be solely applied.
Besides the prohibition of the unauthorised registration and use of a trademark in the name of an agent or a representative of the owner of the trademark in Article 15, the new amendment adds a second paragraph: “Where the application
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is for the registration of a trademark identical or
similar to similar goods, and the applicant clearly another party’s unregistered
trademark which was used earlier for the same or
knows another party’s trademark due to non- agent/representative contract, business or other relations between the applicant and another party, the applicant’s application for registration shall not be allowed if another party opposes it.”
T erefore, an applicant does not need to be an agent or representative in this situation. However, it is still unclear whether the earlier use is restricted to within China’s territory.
Revised grounds of opposition and simplifi ed opposition procedures
Under the old law, anyone can fi le to the CTMO an opposition to a preliminarily approved mark within three months of the date of the publication. Under the new amendment, within the same time limit, anyone can still fi le an opposition based on absolute grounds, but only a prior right holder or a party with an interest can fi le an opposition based on other available grounds (see Table 2).
If the CTMO rejects an opposition, the opposing
Table 1: Review times for proceedings Type of examination procedure handled by the CTMO
Application for registration Opposition Cancellation
Type of review or invalidation procedure handled by the China Trademark Review & Adjudication Board (TRAB)
Appeal against CTMO rejection
Appeal fi led by the applicant of the opposed mark if the CTMO decides against its registration
Appeal against CTMO cancellation or non-cancellation decision Invalidation fi led by others based on absolute grounds Invalidation fi led by others based on relative grounds
Appeal against CTMO announcement of invalidation based on absolute grounds
Table 2: Grounds for fi ling opposition Who can fi le Anyone
Article 10 11 12
Prior right holder or a party with an interest
13.2, 13.3 15
16.1 30
31 32
9
9 9
12 9
3 12 6
3 3 6 3
party cannot appeal against the CTMO’s decision to the TRAB, but it can apply to the TRAB to invalidate the mark aſt er it is registered. By contrast, if the CTMO allows an opposition, the applicant of the opposed mark can appeal against the CTMO’s decision to the TRAB.
Added invalidation procedures
T e dispute procedure under the old law is conceptually broad and vague. Under the new amendment, cancellation and invalidation are clearly separated. T e grounds under which invalidation actions against registered marks can be initiated are similar to the opposition grounds mentioned above.
T e diff erences in invalidation procedures are (1) based on absolute grounds, whereby the CTMO can announce invalidation at any time or anyone can fi le to the TRAB at any time for its announcement of invalidation; and (2) based on other available grounds, prior rights holders or a party with an interest can fi le to the TRAB for its announcement of invalidation within fi ve years aſt er registration (exception: no time limit for invalidation against bad faith registration of a well-known trademark).
Timeframe (months)
9
Extension (months)
Nil
12 6 9 3
Grounds for fi ling
Signs forbidden to be used as trademarks by law Signs generic, descriptive or lacking distinctiveness 3D signs, indistinctive
Protection of well-known marks
Bad faith applications by agents or representatives; bad faith applications by others due to contractual or commercial ties
Confusing geographical indications
Marks confl icting with prior identical/similar registered or preliminarily approved marks
Marks confl icting with prior applications for identical/similar marks
Marks confl icting with other prior rights or pre-emptive bad faith applications for third-party marks which are already in use and have achieved a certain degree of infl uence
World Intellectual Property Review Annual 2014 51
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