The Changing Examination Practice in China: Overcoming Preliminary Refusals
To enhance the efficiency of examinations of trademark applications in China, so that trademark applications can mature to registration more quickly, the China trademark authorities have been speeding up examination procedures. By doing so, many pending cases have been concluded and the examination period has been drastically shortened. In the past, it was normal for a trademark application to be pending 3 years after its application date; today, an application can be approved for preliminary registration in around 6 months.
However, by prioritizing the speed of examination, suspension of cases is no longer available. In many cases, when the mark is refused for registration due to cited third party registrations, it is now very difficult, if not impossible, to secure a suspension of proceedings pending the outcome of a non-use cancellation or invalidation. For example, if a trademark application (Applied Mark) is refused due to a cited prior registration (Cited Mark), which has not been used for more than 3 years, the applicant may consider filing a non-use cancellation to clear the obstacle. To maintain the application of the Applied Mark, the applicant will need to file a review application to contest the refusal, in order to maintain the current application for the Applied Mark. Alternatively, the applicant may drop the current application for the Applied Mark, but re-file a new application (Back-up Application) to wait for the result of the non-use cancellation.
The issue is that there is a lack of clarity as to the timeline for the review of refusal and a non-use cancellation; current practice makes it difficult for professional practitioners to predict to timing of these separate procedures, and thus difficult to provide accurate advice to clients.
The examiner will not suspend the review of refusal to await the outcome of the non-use cancellation, because they need to conclude the case as soon as possible to meet the official time limit for examinations. The consequence is that the applicant usually loses the review of refusal (the application is finally refused) because the Cited Mark is still valid and remains an obstacle when the decision on review of refusal to the Applied Mark is made. In the alternative, a Back-up Application can be filed to prolong the rights of the brand owner, to await the result of the non-use cancellation, but the risk is that some third party could already have filed trademark applications for new or similar marks, which will pose new obstacles. All of this creates unnecessary cost for trademark applicants. It also creates unnecessary additional work for the Chinese trademark office and the Trademark Review and Appeal Board. By allowing for the suspension of selected proceedings, the Chinese Trademark Office could save itself a significant amount of work and time processing unnecessary and repeated applications.
In consideration of the above, and to avoid the complexity of re-filing or filing a review, we prepared the following strategy:
1. Conduct a trademark availability search before filing a mark in China
Conducting a trademark availability search in advance of filing can help an applicant figure out if there are any serious obstacles which block the registration of the marks in China. If so, the applicant may revise the mark to avoid the obstacle, and/or take actions in advance to clear the obstacles. This can minimize the risk that the applicant will have to re-file or file a review, in an attempt to buy more time when the actual refusal is received. This is typically the cheapest and most efficient way to proceed with trademark filings in China.
2. Filing a review application and back-up application simultaneously
In the alternative, the applicant can start over by re-filing. Compared with review actions to clear the obstacles, a new trademark application is much cheaper in China. In addition, if we lose the opportunity to take action against the obstacle and new obstacles are cited, we need to spend more time and energy to clear the new obstacle. Therefore, when we file a review application against the refusal of the Applied Mark and take action to clear the Cited Mark, we strongly recommend filing a Back-up Application to keep a safer pending right as a back-up. We understand that it looks like we are repeatedly spending money in this way but according to the current practice, this can be the most cost efficient way to overcome the refusal and get the mark registered in China.
About the author(s)
Senior Trademark Agent
Phone: +86 10 88369999