The Impact of the Revision of the Trademark Law on Trademark Application in China

The third revision of the Trademark Law of the People’s Republic of China will come into force on May 1, 2014. We notice that the new revision makes substantial improvement concerning the application of trademark in aspects including expanding the scope for trademark registration, simplifying the process of the trademark registration, improving examination procedure, shortening time limit for examination/opposition, etc. The details are as follows:

I. The scope for the trademark registration is expanded.

The Trademark Law prior to this revision limits the scope of trademark registrable to text, graph, alphabetic letter, number, three-dimensional symbol, combination of color or any combination thereof. Therefore, visible mark is the condition for the trademark registration. The revised Trademark Law has further expanded the scope of the registered trademark and allowed sound to be registered as a trademark, which greatly enriches the connotation for trademark registration.

II. The process of the trademark registration is optimized.

The Trademark Law prior to the revision adheres to the principle of one trademark on one class, i.e. one trademark application is only allowed for commodities/service under one class. If the applicant requires the same mark on multiple classes, separate filings have to be brought. The revised Trademark Law now allows cross-class application which means the applicant can apply for one trademark for commodities or services under multiple classes in one trademark filing. Thus, the process for registration is simplified. The applicant will be able to seek cross-class protection in one trademark filing.

III. The examination procedure is further improved.

In the trademark application prior to the revision of Trademark Law, the Trademark Office will only review and examine the content of the mark as it is submitted. Due to the limit in searching the same or similar marks prior to the filing, in case of existence of same or similar cited trademarks, the application will be directly rejected by the Trademark Office.
In order to reduce the occurrence of rejection due to the said reason, the revised Trademark Law stipulates that during the process of examination, the Trademark Office may require the applicant to explain or correct the content of the trademark filed, which will give the applicant chance of correction so that the possibility of rejection can be reduced and the chance of success is increased.

 IV. The time limit for trademark examination and opposition is clarified

The Trademark Law prior to the revision gives no specific time limit for examination towards the trademark application. In fact, a trademark filing will take approximately 12 months before it is granted. To increase the efficiency of the examination, the revised Trademark Law specifies the Trademark Office shall complete the examination within 9 months and put on publication for those meeting the requirements for registration.

In addition, in the event an opposition is filed against a trademark which has been put on publication, the revised Trademark Law specifies that the Trademark Office shall determine whether the trademark shall be granted within 12 months starting from the expiry of the period of publication after listening to the facts and reasons from both the opposer and the opposed party. Under special circumstances, the term can be extended for another 6 months.

For any decision of not granting the trademark made by the Trademark Office, the opposed party is entitled to file an appeal to the Trademark Appeal Board within 15 days upon receipt of the decision. The Board shall make a decision within 12 months upon receipt of the appeal from the opposed party. Under special circumstances, the term can be extended to another 6 months.