Chinese Trademark Office Issues Announcement on Multi-Class Trademark Applications
There are various clarifications made by the Chinese Trademark Office in relation to the filing and prosecution of multi-class trademark applications in China.
On August 20, 2014, the Chinese Trademark Office (“CTO”) released an announcement on instruction concerning the division of multiclass trademark applications and notices relating to such applications on its website.
Background of the said announcement
In accordance with the Article 22 of the new Trademark Law (“Law”), a trademark registration applicant may apply for the registration of the same trademark in multiple classes of goods through one application. It means that if an applicant wants to register the same trademark in several classes, such applicant may only prepare one set of application materials other than preparing several application forms. In this way, it will be good for simplifying applicant’s application procedure and improve the CTO’s efficiency (as well as those of the trademark lawyers/attorneys). However, such new rule may also cause new problems. For instance, if partial goods or services in one of the classes are rejected, what will happen to the rest in the application? In order to cope with this kind of issue and a large volume of questions from the IP law community, as to these sorts of filings, the CTO was required to issue this new announcement.
The Division of Trademark Applications
In accordance with the Article 22 of the Law, in case the CTO rejects part of designated goods in a trademark registration application, the applicant may divide the part of the application that passes the preliminary examination into another application, and such divided application will keep the original application date. In case of requiring the said division, the applicant shall apply for division to the CTO within the fifteen days after receipt of the Partial Rejection Notice of Trademark Registration Application. After receipt of the said divisional application, the CTO shall divide the original into two, and form a new application number for the divided application that has passed the preliminary examination and announce the divided application. The aforesaid announcement made by the CTO is to clarify some issues involved in the process of dividing a trademark application.
Process of the Divisional Application
According to the announcement, the process includes following steps:
The CTO will send the Application Form for Dividing the Trademark Registration Application (“the Divisional Application”) along with the Partial Rejection Notice to the applicant;
In case the applicant decides to divide the registration application, such applicant shall fill in and sign the Divisional Application according to the “Notice” printed on the said application;
The applicant or its agent shall send or courier the Divisional Application to the CTO within 15 days after receipt of such application. No application shall be submitted if the applicant decides not to divide the application.
The CTO will examine the Divisional Application as well as other required documents.
Results of the Divisional Application
In case the Divisional Application meets the requirements, the CTO will divide the original registration application into two. For the part that passes the preliminary examination, it will be given a new application number whilst keeping the original application date, and it will be announced on the CTO Gazette. In this case, if no opposition is raised against this part of the application within three months after its announcement, this part will be registered as trademark. As to the proposed rejected part, it will keep the original application number. Under such circumstance, the applicant may claim its right through process, such as appealing to the TRAB for reviewing the rejection decision made by the CTO.
In case the Divisional Application does not meet the requirements, it will be deemed as that the applicant does not agree to divide the original application. As to the part that has passed the preliminary examination, it will be announced after the legal process of the appeal for the rejection is terminated.
Note: Since no extra cost will be incurred from dividing the original application, it is suggested that the applicant make full use of this opportunity to divide the application. The obvious benefit to do so is that the non-rejected part of the application will be announced to the public and be approved to be registered as early as possible on the premises that there is no opposition raised during the announcement period. In this way, at least these part of the applicant’s right can be confirmed legally and protected under the Trademark Law. Otherwise, it may take a few years to get the non-rejected part of the application to be finally registered.
Other issues relating to the Divisional Application
According to the said announcement, following issues are also deserved of attention:
In case the applicant’s name or the agency is changed, relevant certificates/documents shall be submitted along with the Divisional Application;
Each registration application can only be divided once, and it is only applicable in the process of rejecting partial designated goods and services of the said application. In other words, the Divisional Application does not apply to other trademark process, such as opposition, assignment.
The Divisional Application must be submitted within the said period; otherwise, it will be deemed as no agreeing to divide the original application.
Once the Divisional Application is submitted, it can not be withdrawn.
It is hoped that the Announcement has cleared up a lot of the concerns that trademark lawyers have regarding China’s new multiclass filing system. There are sure to be more teething problems as China adopts a more modern trademark filing system though, but timely announcements and clarifications from the CTO, will assist in alleviating any unnecessary concerns whilst protecting the integrity of filed applications and legal strategies.
ABOUT THE AUTHOR: Fei Dang and Matthew Murphy
Fei Dang is an Associate in the MMLC Group. Matthew Murphy is the Managing Partner and Founder of the MMLC Group.
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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.