Two and half years passed since the New China Trademark Law and Regulation on the Implementation of the China Trademark Law were implemented as of May 1, 2014, China Trademark Office (the CTMO) and Trademark Review and Adjudication Board (the TRAB) finally issue the new version of Trademark Review and Examination Criteria. Compared with the previous version, the new version added and revised some content to keep pace with the New China Trademark Law and Regulation on the Implementation of the China Trademark Law. Below we briefly present the six aspects of the added content and one aspect of the revised content for your easy reference.
1. The New version adds the Review and Examination Criteria on the Sound Mark
The New China Trademark Law introduces the Sound Mark and the Regulation on the Implementation of the China Trademark Law also stipulates some details on the Sound Mark. However, how to examine a sound mark is a new practice for the CTMO and the TRAB. The New Trademark Review and Examination Criteria elaborate the criteria from formal examination and substantial examination respectively. For example, the New Trademark Review and Examination Criteria describes the examination on the distinctiveness and similarity.
2. The New version reintroduces the application of the Examination Opinion
Article 29 of the New Trademark Law provides, during the examination process, if the CTMO believes it necessary to clarify or amend the content of the application for registration of a trademark, it can require the applicant to clarify or amend the application document. Failure of the applicant to do so will not affect the CTMO from issuing an examination decision. According to this Article, if the CTMO opines that the trademark application violate the China Trademark Law, but the exceptional regulation may exist, the CTMO may issue an examination opinion requiring the applicant to clarify or amend the application document instead of making a refusal. This new practice may accelerate the registration process of a trademark to some extent.
3. The new version adds the examination criteria on the application of Article 19 of China Trademark Law
The fourth paragraph of Article 19 of the New China Trademark Law stipulates, the trademark agency should not apply for registration of trademarks unless it involves the registration of its own service trademark.
For the trademark application filed by the trademark agency, the CTMO shall issue a notification of non-acceptance in the formal examination. If accepted in the formal examination, the CTMO shall refuse the registration of the trademark filed by the trademark agency. According to the New Trademark Review and Examination Criteria, the representing services involved by the trademark agency only refer to the services of subclass 4506 in Class 45.
4. The new version adds the examination criteria on the application of Article 50 of China Trademark Law
Article 50 of the New China Trademark Law stipulates, where a registered trademark is cancelled, is invalid or is not renewed upon expiration of its validity term, the CTMO shall not approve registration of applications for trademarks identical or similar to the said trademark within one year of the date on which the trademark is cancelled, invalided or deregistered.
According to the New Trademark Review and Examination Criteria, when making examination decisions, if the prior similar or identical registered trademarks are cancelled (except the cancelled due to the non-use), are invalided or are not renewed, but the publication of cancellation decision or the expiration of review deadline of invalidity or the expiration of the validity term is less than one year, they should be cited. This regulation does not apply to the new application filed by the original registrant.
If the prior similar or identical registered trademarks are cancelled due to non-use, and the review deadline has been expired, they shall not be cited.
5. The new version adds the examination criteria on the application of Article 15 of China Trademark Law
The second paragraph of Article 15 of the New China Trademark Law stipulates, where a trademark application is in respect of identical or similar goods, and the trademark is identical or similar to another party’s prior used trademark, and where the applicant is aware of the existence of the prior used trademark because of contractual, business interaction or other relations, other than those provided in the preceding paragraph, the application shall be rejected upon opposition by the party.
The New Trademark Review and Examination Criteria regulates the applicable requirements, the recognition of the contractual, business interaction or other relations, the recognition of prior use and other special situation applicable to the second paragraph of Article 15. The examination criteria in this regard could help the examiners and the lawyers to analyze the specific cases and determine whether the second paragraph of Article 15 is applicable to the cases.
6. The new version adds the examination criteria on the recognition of interested party
According to the New Trademark Review and Examination Criteria, the following party could be recognized as the interested party:
1) The licensee of the prior trademark right or other prior rights;
2) The legitimate successor of the prior trademark rights or other prior rights;
3) The pledgee of the prior rights;
4) The party who could provide evidence to prove the interested relationship with the prior trademark rights or other prior rights.
7. The new version revises the examination criteria according to the amendment of the Article 10 of the New Trademark Law.
The New China Trademark Law amends the Article 10.1.7 from “those representing promotion in an exaggerated manner and are deceptive in nature should not be used as trademarks” to “those which are deceptive in nature or easily mislead the republic into mistaking the quality and the place of origin of the goods should not be used as trademarks”.
According to the amendment of the Article 10 of the New Trademark Law, the New Trademark Review and Examination Criteria describes many situations under which the trademarks should not be allowed for registration. In these situations, the CTMO and TRAB were used to apply the Article 10.1.8 to regulate and examine in practice under the old version of China Trademark Law. Now the New Trademark Review and Examination Criteria revises the criteria in this regard. With the amendment, some cases which were examined according to the Article 10.1.8 shall be applicable to the Article 10.1.7 now.
Our client LS&Co. is the owner of “LEVI’S” in China. Its brand “LEVI’S” is known as “Li-Wei-Si” (In Chinese: 李维斯) by Chinese consumers. A trademark squatter, an individual named Liu Zuofu, registered a trademark fully incorporating “Li-Wei-Si” as early as 2010: “Ku-Ai-Li-Wei-Si.” At this time the client owned no prior registration of the Chinese mark “Li-Wei-Si.” Liu Zuofu also owns a company named Guangzhou City Yixuan Apparel Co., Ltd. to manufacture and distribute “Ku-Ai-Li-Wei-Si” branded infringing jeans.