By Ray Zhao, Unitalen Attorneys at Law
Although it seems like 2017 has only just begun, there have been some interesting new updates in Chinese trademark practice in this short initial season. The following updates are summarized below:
1. New edition of Classification of Similar Goods and Services for registration in People’s Republic of China
Nice classification (11th edition) was officially put into use by WIPO on January 1st of 2017. The Chinese Trademark Office accordingly updated classification of similar goods and services table, in which many new goods or services were added, such as intelligent robot, selfie stick, screen protective film, head virtual reality, self-balanced vehicles, downloadable apps, bike share services, etc. Of course, some old goods or services were also deleted and modified.
According to current practice, the CTMO would like to accept standard items based on classification of similar goods and services table and the four lists for the accepted non-standard items announced by the CTMO. Therefore, due to non-standard many new items with new technology were not accepted by the CTMO. Thus, for some applicants or registrants, who only covered their real goods or services in their previous applications or registrations by broader descriptions or similar but standard descriptions, the new edition may meet and help their needs of protection on many new items with new technology.
2.The Amendment of the Trademark Examination Criteria
The present Trademark Law of the People's Republic of China was enacted in 1982 and subsequently amended in 1993, 2001 and 2013 respectively. As the most related governmental body for trademark matters, the Chinese Trademark Office and the Trademark Adjudication Board enacted Trademark Examination Criteria following each amendment of Trademark Law in order to give a guideline to all the examiners and practitioners. After the New Trademark Law of the People's Republic of China came into force on May 1st of 2014 respectively, the CTMO and the TRAB started to draft the new amendment of the Trademark Examination Criteria and finally announced the new amendment on January 4 of 2017.
Basically, there are many changes in the amendment in order to be consistent with the new Chinese Trademark Law and the Supplementary Regulation of the new Trademark Law. These adaptations include the examination criteria on sound mark, application criteria for applying office actions, examination criteria for bad faith application and etc. In particular, with sound mark, it listed requirements of formality examination and substantial examination, which include examination of absolute ground, distinctiveness and similarity. Trademarks that are too simple, too generic or too long will not be enough to be registered as sound mark.
3. E-filing is available to all the applicants
On July 14 of 2016, the State Administration of Industry & Commerce enacted a new guideline, pointing out that e-filing will be available to all the applicants instead of only to IP agencies. This new and convenient policy, which has no requirements for Power of attorney and certificate of good standing, came into force from March 10 of 2017. In the meantime, as the CTMO set up a special and detailed regulation for e-filing procedures, it will not be that easy for applicants who have less knowledge on the regulation. And since only standard items could be selected to do e-filing, applicants who want to use somehow non-standard items, cannot use e-filing.
In conclusion, applicants shall have to decide which option better suits their needs. Specifically, for applicants who could accept standard items protection on an urgent basis and want to avoid some formality documentations, e-filing is absolutely better, easier and faster. However, if applicants prefer to apply for non-standard items as a try, paper-filing will seems to be more suitable.
4. 50% off costs reduction for trademark matters
Since April 1st of 2017, the CTMO and the TRAB would reduce 50% official fees for almost all trademark matters, including new application, renewal, transfer, modification non-use cancellation, opposition and invalidation. This new reduction will definitely help many applicants to save costs of official fees and encourage domestic and international applicants to file more trademark applications.
On the other hand, as there was nearly 3.7 million new trademark applications filed before the CTMO in 2016 and could exceed 4 million this year, so many effective registrations and applications are already co-existing, it will be relatively easier to encounter prior rights in the future. Since China is a country which still follow “first to file, first to register”, so it is highly recommendable to file new applications in China as early as possible to obtain registration without rejections.
5. The Amendment of the judicial interpretation on Several Issues Concerning the Trial of Administrative Cases Involving the Authorization and Determination of Trademark Rights
Since the Decision of the Standing Committee of the National People's Congress on Amending the Trademark Law of the People's Republic of China came into force on December 1, 2001, the People's Courts started accepting and hearing cases about the authorization and determination of trademark rights. These were brought by the interested parties for the review of rejection, review of opposition filed by trademark applicants, review of invalidation, review of non-use cancellation and invalidation made by the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce.
According to official statistic, administrative litigation of intellectual property is increasing every year in China. From 2002 to 2009, there were only 2624 IP litigation cases in China, however, in 2013 the number became 2161, 2014 was 7951 and 2015 was 7545. IP courts have actively explored issues concerning the application of law in the trial of these cases, and have accumulated a lot of judicial experiences.
To better try administrative cases about the authorization and determination of trademark rights, further summarize judicial experiences, and clarify and unify the standards for hearing such cases, the Supreme People's Court held many symposiums and launched many investigation and research activities to hear advices from the relevant courts, departments, experts and scholars. These researched on and summarized the application of law in the trial of administrative cases about the authorization and determination of trademark rights. Based thereon, and according to the Trademark Law of the People's Republic of China, the Administrative Procedure Law of the People's Republic of China and other relevant laws and regulations, the Supreme People's Court presents the following opinions in light of the actual situations of the adjudicative work:
a) Whether or not trademark registration certificate could be a proof of prior copyright is always controversial. However, according to the new interpretation, the owner of prior copyright could preliminarily claim copyright on the basis of trademark publication or trademark registration certificate. If there is no contrary, then trademark certificate or publication could be presumed as evidence for copyright. This will reduce burden of proof of brand owner.
b) Merchandising right, which is not subject to copyright protection under Chinese copyright law, could be protected, if it has certain reputation or fame and there is a likelihood of confusion.