China Publishes 2017 Revision of Standards for Trademark Examination and Adjudication
[Data Source: SAIC Official Website]
In response to the third revision to the Trademark Law of China, the State Administration for Industry and Commerce ("SAIC") of the People's Republic of China announced the latest revised Standards for Trademark Examination and Adjudication (hereafter, the "STEA") on January 4, 2017. The newly revised STEA further enhances the protection for prior right holder and prohibits trademark squatting in bad faith.
This revised STEA has been adopted by the Trademark Office and the Trademark Review and Adjudication Board (“TRAB”) in trademark examination and trial of cases related to trademarks. It is also applicable to cases related to trademarks lodged prior to the issuance of this revision. The key contents added in this STEA are summarized as follows:
1. Standard for Trial under Article 15.2 of the Trademark Law
1.1 It is set forth in Article 15.2 of the Trademark Law: "Where a trademark applied for registration in respect of identical or similar goods is identical or similar to another counter party's prior used trademark, and where the applicant is explicitly aware of the existence of the prior used trademark because of contractual, business interaction or other relations, the application shall be rejected upon opposition by the counter party."
1.2 Determination of "Prior Use"
The term "Prior Use" referred to in Article 15.2 of the Trademark Law means that prior to filing registration application for the trademark at issue, said mark has been used in actual sale, promotion or advertisement in China market, or preparatory activities have been carried out for its entering into China market. No proof is required that the trademark already has a certain degree of influence through use.
1.3 Determination of contractual, business interaction and other relationships
A. Contractual and business interaction relationship means any business cooperation or mutual trading relationship other than representative or deputy relationship that exists between both parties; Common contractual and business interaction relationships include: Purchase and sale relationship; Entrusted processing relationship; Alliance relationship (Trademark Use License); Investment relationship; Sponsoring or jointly hosting of an activity; Business survey and negotiation relationship; and advertising agency relationship. Such relation can be proven by any of the following evidences: contracts; and reciprocal business correspondence/letters, transaction vouchers, purchasing materials, etc. which can prove contractual or business interactions.
B. Other relationships mean the relationships other than commercial interactions between both parties. Such relationships include: kinship; subordination (ordinary employees rather than legal representatives), etc. These relationships can be proven by the following evidences: Enterprise's payroll sheets, labor contracts, social insurance or medical insurance documents, certificates of residency registration, etc.; (It is also confirmed in Article 16 of the Rules on Issues Concerning the Trial of Administrative Cases Involving Trademark Approval and Validity of the P.R.C Supreme People's Court 2017 that the trademark applicant is located within the vicinity of the business site of a prior user can be a sort of other relationships referred to herein.)
2. Standard for Application of Article 19.4 of the Trademark Law
Corresponding provision has been set forth in this STEA pursuant to Article 19.4 of the Trademark Law. It states that: during formal examination of trademark, applications for goods or services other than agency service filed by a trademark agency shall be rejected; and the already accepted cases shall be rejected during the substantive examination.
3. Standard for Use of Office Actions in Examination Practices
An Office Action is issued when the Trademark Office holds that although a trademark registration application violates the relevant provisions of the Trademark Law, some possible circumstances that are consistent with the exception provisions exist. It requires the applicant to submit an explanation or amendment within 15 days. Where the supplemented/amended application complies with the statutory exception provisions, a preliminary examination is permitted. Office Actions apply to circumstances such as "Trademarks that become distinctive and easily identifiable through use", "Those that are identical or similar to the state name of a foreign country but consented by that country’s government", etc.
3.1 Application Scope of Office Actions:
ü Those that are identical or similar to the state name, national flag, national emblem, or military flag, etc. of a foreign country but consented by that country’s government;
ü Those that are identical or similar to the name, flag, or emblem of an intergovernmental organization but consented by such organization or when they are unlikely to mislead the public;
ü Those that are identical or similar to official signs or hallmarks indicating control or warranty but with authorization;
ü Any name of an administrative division at or above the county level or a foreign place name that is known to the public, which has other meanings or is an integral part of a collective or certification mark;
ü Those containing a state name or any name of administrative division at or above the county level which are applied to be registered for use on special goods such as newspapers, magazines, periodicals, newsletters, etc., where the applicant is required to present relevant evidential documents such as Periodical Publication License;
ü Trademarks that become distinctive and easily identifiable through use.
3.2 Term: Each applicant sha1l submit an explanation or amendment within fifteen (15) days from the receipt of notice from the Trademark Office.
4. Standard for the Standing of Interested Parties
The interested party that has the right to file an objection or invalidation action under Article 33 or Article 45 of the Trademark Law includes: the licensed users, lawful successors or pledgee of prior trademark right or other prior rights; etc. Where an interested relationship was absent when the application was filed but later become existed during trial of the case, the standing of the interested party shall be recognized.
5. Standard for Application of Article 50 of the Trademark Law
A corresponding criterion is provided in the STEA based on Article 50 of the Trademark Law: i.e., where a registered trademark is cancelled (except those cancelled due to nonuse for consecutive three (3) years), invalided or is not renewed after expiration, then within one (1) year from the date when the revocation is published, when the term for invalidation review expires or when the term for exclusive use of said trademark expires, said mark shall be cited as an evidence to reject any post filings for the same or similar trademark.
6. Standard for Sound Mark Examination
The STEA lists the elements for both formal and substantive examinations of sound mark registration application. Wherein, substantive examination for sound marks includes examination against prohibitive provisions, distinctiveness examination and identity/similarity examination.
Sound trademark is a new type of trademarks included to the Trademark Law in 2014. The formulation of Standard for Sound Mark Examination provides an important guidance to sound mark applicants and is expected to help reduce the risk of office actions for amendment or rejection of application due to incompliance with formal or substantive requirements.
6.1 Examination against prohibitive provisions: i.e., a sound mark shall not violate the provision of Article 10 of the Trademark Law. For example, Chinese or foreign national anthems, religious music, and sounds concerning t terror or violence, etc. shall not be used for trademark registration application.
6.2 Distinctiveness Examination:
Sounds which merely directly indicate the contents, targeted consumers, quality, functions, purposes or other characteristics of a designated goods or services shall not be registered. For example, melodies of classical music works used for "arrangement and organization of concerts"; a crisp sound of "ta" during opening bottles used for "beers".
Other sounds lacking distinctiveness such as: a complete or lengthy piece of song or music; music or sounds commonly used in a certain industry, etc.
6.3 Identity/Similarity Examination: Including both examination of identity/similarity between sound marks, and those between sound marks and visual marks. That is, a sound trademark registration application shall be rejected if the text or other elements corresponding to the voice in said sound mark is identical or similar in pronunciation to the text or other elements contained in a visual mark.
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