Amendments to the China Trademark Examination and Trial Standards
On 4 January 2017, the China Trademark Office (CTO) and Trademark Review and Adjudication Board (TRAB) issued the amended Trademark Examination and Trial Standards (Standards), to match the latest Trademark Law.
The amended Standards improved the old version from the following aspects: 1) added the examination of a sound trademark, 2) added the CTO’s issuing of the Examination Opinion during the examination, 3) added the application of Paragraph 4 of Article 19, Article 50, Paragraph 2 of Article 15 of the Trademark Law, 4) added the identification of the “interested party”, 5) amended the standard for examination under Article 10 of Trademark Law, and 6) deleted and added some cases. The main amendments are listed below.
Examination of a Sound Trademark
Article 13 of the Implementation Regulations of the Trademark Law simply stipulates that where an application is filed for registering a sound trademark, it shall be stated in the application, a sound sample that meets the prescribed requirements shall be submitted, a description of the sound mark to be registered shall be provided, and the instructions for use of the trademark shall be provided. In addition to a textual description of the sound mark, the stave or numbered musical notation shall be used to describe the sound to be registered as a trademark; or if it is impossible to describe the sound mark with the stave or numbered musical notation, a textual description shall be provided. The trademark description shall be consistent with the sound sample.
The new Standards define the sound trademark as a trademark consisting of the sound itself which is used for distinguishing the source of goods or services. A sound mark may be constituted by a piece of music, the sound of nature, human or animals, or their mixture. And the specific standards for examination of a sound mark are as following:
Formality examination of a sound mark application
1) Where an application is filed for registering a sound trademark, it shall be stated in the application.
2) A sound sample that meets the prescribed requirements shall be submitted – the sound sample should be a proper .wav or .mp3 file stored in a CD-ROM.
3) A sound mark consisting of or including music should be described with a five lines spectrum or numbered musical notation, accompanied by a description of the text, for example, “this sound trademark is a melody consisting of five notes of ‘D major, D major, G major, D major, and A major’ in succession.”
4) A sound mark consisting of non-music should be described in words, for example, “the sound mark is made up of the sounds of a cow’s hoof on the stone slab and moo (clip, clop, moo).”
5) The applicant shall state how to use the sound mark, such as to be used “during open, closure or use of the goods”, “during commence, closure or provision of the services”, “in operation or service places”, “on the company website”, or “in advertising”.
Substantial examination of a sound mark application
1) A melody identical with or similar to China or foreign national anthem, or religious music or the sound related to terrorist or violence is prohibited for registration.
2) Piano sounds for the goods “instruments”, children laughing sound for “infant formula”, dog barking or mew for “pet feeding”, classical music for “arrangement and organization of concerts”, the crisp “da” sound of bottle open for “beers”, children’s voice “water is boiling” for electric kettles will be identified as non-distinctive sound marks. Further, simple, common tone or melody, a complete or lengthy song or composition, a slogan in ordinary tone, or a generic music or sound in the industry, is not distinctive, either.
3) A sound mark may be determined as similar to a visible mark, for example, the sound mark “yahoo” is similar to the word mark “yahoo”.
Examination Opinion issued by the CTO
In accordance with Article 29 of the Trademark Law and Article 23 of the Implementation Regulations, where the content of trademark registration application is deemed to require further explanation or revision in the course of examination, the CTO may send an Examination Opinion, requiring the applicant to submit further explanation or revision within 15 days from receipt of the Opinion.
The new Standards further clarify that the Examination Opinion is issued when the CTO considers a trademark registration application violates relevant provisions of the Trademark Law, but there is a possibility that the application consists with exception situations. Specifically, the Examination Opinion may be issued under one of the following circumstances:
1) A mark included in a new registration application is identical with or similar to the state names, national flags, national emblems or military flags of foreign countries, but there is a possibility that the applicant had obtained the permission from the government of the country involved – if the applicant could show the permission in some way, the application could be preliminarily accepted;
2) A mark included in a new registration application is identical with or similar to the flags, emblems, names or others of international inter-governmental organizations, but there is a possibility that the applicant had obtained the permission from the organization concerned or the applicant could establish that there is no likelihood of confusion;
3) A mark included in a new registration application is identical with or similar to an official mark or inspection seal that indicates control and guarantee, but there is a possibility that the applicant had obtained the authorization;
4) The applicant filed an application to register a mark containing the country name or place name, in relation to special goods, such as newspaper, magazine, periodicals, news publications, and the CTO needs the applicant to provide relevant evidence, such as a periodical publication license;
5) A mark is determined by the CTO as a mark without inherent distinctiveness, but there is a possibility that the mark had obtained distinctiveness through use, under Paragraph 2 of Article 11 of the Trademark Law;
6) Other circumstances as necessary for the CTO.
For one trademark registration application, the Examination Opinion can be issued by the CTO to the applicant only once.
Application of Article 50 of the Trademark Law
Article 50 of the Trademark Law stipulates that where a registered trademark has been cancelled, invalidated or has not been renewed upon expiration, the CTO shall not approve any application for the registration of a trademark that is identical with or similar to the said trademark for a period of one year from the date of cancellation, invalidation, or the date of expiration.
Actually, a similar clause was also included in the old Trademark Law 2001, however, it was hardly applied to any cases by the CTO in practice - not any registration applications were rejected by the CTO under this clause before 1 May 2014. Since the new Trademark Law commenced operation on 1 May 2014, we have seen a few applications were rejected based on Article 50.
Kit Kat Food Co., Ltd., a Taiwan food company filed an application (No.13589218) to register the mark “Hua Shi Fu and design” in relation to various goods in class 30 on 22 November 2013. The CTO partially rejected the application in relation to “noodles and pancake skins” on 8 April 2015, on the grounds that the mark included in Application No.13589218 is similar to the “Hua Shi Fu” mark (No.3438501) listed in the name of Foundation Rongchang Food Enterprise Co., Ltd., a Singapore company, even if the cited mark expired on 6 February 2015 due to non-renewal within the grace period. The CTO rejected the application, based on a similar mark that expired within one year, under Article 50.
Zhang Chunling, a Chinese person filed an application (No. 13940452) to register the mark “Yi Duo Duo” in relation to various goods in class 31 on 20 January 2014. The CTO partially rejected the application in relation to “berries, fresh fruits; mushrooms, fresh, for food; Plant seeds; Animal foodstuffs; Malt for brewing and distilling” on 30 January 2015, based on 4 prior similar applications and registrations. One of the cited marks, “E-MUCH Yi Duo Duo” (No.3518228) listed in the name of Gansu Yi Duo Duo Investment Co., Ltd. expired due to non-renewal, but it was still listed as one of the cited marks by the CTO under Article 50.
The Standards reiterate the legislative purpose of Article 50. If a new registration of an identical or similar mark was approved without a certain time period of isolation, as soon as a registered mark was canceled, invalidated or expired, there would be a possibility that the original registrant’s goods or services under the canceled/invalidated/expired mark have not leftthe market as yet, but the new registrant’s goods or services have been put on to the market – confusion would ensue. Article 50 is applied, to avoid such confusion and protect the market order, and is therefore quite limited in its application despite a literal reading of the article.
The Standards also clarify an exception to the application of Article 50. Article 50 is not applied, if a registration mark is canceled due to 3 years of non-use, as this means there are no goods under the mark in the market for 3 years, and accordingly there is no possibility of confusion, even if an identical or similar mark is registered within one year.
Further, the Standards clarify that Article 50 is not applied, when the registration application is re-filed by the original registrant.
Related Party’s Filing in Bad Faith
Paragraph 2 of Article 15 of the Trademark Law stipulates where an applicant for registration of a trademark identical with or similar to an unregistered trademark in prior use by another party on identical or similar goods has any contractual, business or other relationship except the relationship described in the preceding paragraph with the other party and knows the existence of the unregistered trademark, the trademark shall not be registered upon opposition from the other party.
According to the Standards, such a provision is applied when all the following elements are met:
1) Another party’s mark had been used before filing of the mark at issue;
2) The applicant of the mark at issue and the prior mark user have contractual, business or other relationship, and due to the relationship, the applicant knows the existence of another party’s mark;
3) The mark included in the application and the mark in prior use constitute similar marks in relation to similar goods.
The Standards further clarify that the “contractual or business relationship” referred to in the provisions above include trading relationship; commissioned processing; joining relationship (trademark licensing); investment; sponsorship; joint; business investigation, consultation relationship; advertising agency, and “other relationship” referred to in the provisions above include kinship and affiliate.
The Standards also list the following typical evidence that may show the existence of the contractual, business or other relationship:
2) Letters, transaction documents, and procurement information which may show the agreement and business;
3) Corporate payroll, labor contracts, social insurance, medical insurance materials, household registration certificate, etc.
Examination of an Application filed by an Agency in its Own Name
In accordance with Paragraph 4 of Article 19 of the Trademark Law and Article 87 of Implementation Regulations, except for applying to register trademarks in relation to its agency service, a trademark agency shall not register other trademarks.
The Standards further provide that during formality examination, an application filed by a trademark agency to register a mark in relation to other goods or services than its agency service (included in Sub-group 4506 of the Similar Goods and Services Classification Table) would not be preliminarily accepted; those have been preliminarily accepted would be rejected during substantial examination.
Identification of an “Interested Party”
Articles 33 and 45 of the Trademark Law grant prior right holders and any “interested party” the right to file an opposition or invalidation action. According to the Standards, the interested party specifically includes the following:
1) the licensee of prior trademark right and other prior right;
2) the successor of prior trademark right and other prior right;
3) the pledgee of prior trademark right;
4) other subjects who can establish that it has an interest in prior trademark right and other prior right.
To judge if the applicant is an interested party or not, principally the status at the time of filing of the opposition or invalidation action would be considered. If there is no interest at the time of filing, but there is an interest during the trial, the applicant should be identified as an interested party.
ABOUT THE AUTHOR: Yu Du
Yu Du is a Partner in 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.