BKIP Limited

COPYRIGHT BKIP 2020
Reviewing Trademark Applications in China Jul 2020
Trademark refusal review refers to the application for review through the Trademark Review and Adjudication Board (TRAB) in accordance with Article 34 of the Trademark Law by the applicant of a trademark registration, who is dissatisfied with the Trademark Office’s refusal of his trademark application. These cases are lawfully decided by the TRAB.
Where the involved party is not satisfied with the decision of the TRAB, an appeal to the Beijing Intellectual Property Court can be filed within 30 days of receiving the notice.
When the trademark submitted for registration is rejected by the Trademark Office due to its incompatibility with rules regarding the Trademark Law, the involved party can utilize this trademark reviewing procedures – trademark refusal review – to approve the registration of the said trademark through the TRAB. In ordinary situations, the rejection of trademarks has relative and absolute reasons:
Relative reasons for the rejection of trademarks:
1. Within the same category and having the same trademark;
2. Within the same category and having a similar trademark;
3. Within the same category, some trademarks are the same, some are similar;
4. Within different categories but protecting the same type of product;
5. Within different categories but protecting similar products;
6. Having the same or similar trademark and with a later application date;
Absolute reasons for the rejection of trademarks:
1. Article 10 of Trademark Law specified: related to the country’s symbol and name, army symbols, symbols of international organization, symbols like Red Cross and Red Crescent, those of ethnically discriminating and fraudulent nature, those that harm socialist moral values and expand and create bad social influences, related to names of locations beyond county level and names of publicly-known foreign locations etc.
2. Article 11 of Trademark Law specified: only having the product’s common name, only having the product’s shape, only having the product’s model; barely showing the product’s quality directly, barely showing the product’s materials directly, barely showing the product’s functions directly, barely showing the product’s use directly, barely showing the product’s weight directly, barely showing the product’s quantity and its features directly; lack of recognition; however, if its recognized features are obtained through its use and is easily recognized by the public, it can be registered as a trademark.
3. Article 13 of the Trademark Law specified: replicating, imitating, and translating well-known trademarks that have been or have not been registered in China, easily causing misidentification, not easily identified.
4. Article 12 of the Trademark Law specified: registered with a three-dimensional symbol, shapes generated through the nature of the product itself only, product shapes for obtaining a technical effect or shapes that cause the product to have a substantive value;
5. Paris Convention also made prohibitive rules: trademarks violating the rights of a third party who requested the protection of a country; trademarks that lack a prominent feature, trademarks made by symbols and signs that are totally used in businesses to show a product’s type, quality, quantity, use, value, place of manufacture or date of manufacture, trademarks made by modern language of countries that have been requested to provide protection or symbols and signs that are routinely used in legitimate practicing businesses; violating morality or public order, especially trademarks of a publicly deceptive nature. Moreover, the Convention also ruled that, regarding the above prohibitive rules, all realistic situations must be considered, especially the length of usage of the trademarks.
1. The function of trademark rejection review:
(1) Having another chance to exchange reasoning. “On what grounds did the Trademark Bureau base their rejection on, I am not convinced!” Those who are not convinced with the Trademark Bureau’s reasons can set forth their reasoning and views fully through the Trademark Assessing Committee.
(2) Can effectively delay time. Some trademarks are applied by the same applicant, but due to changes in the applicant name, a change in application has not been timely filed with the Trademark Bureau. For those trademarks, the situation can be clarified through the Trademark Assessing Committee and the trademark will be approved after relevant procedures are performed.
(3) Can greatly reduce the time for obtaining a certificate. Some trademark reviews succeed easily. After the review decision is released, it is quite possible to obtain a “Trademark Registration Certificate” within a year; once you forfeit review, you will need to start all over again in 3 to 5 years!
(4) Extremely easy to raise the added value of a trademark. Many trademarks have been “TM” for years. This resulted in a large number of enterprises having to manage their production under “TM” status. Once the trademark application rejection review succeeds, it could possibly change the fate of an enterprise’ development!
Summarizing the above; In order to ensure the quality of a review, protect the interests of the trademark registration applicant, the Trademark Law provided the rejection review as a rescue programme.
2. The application process of a trademark rejection review:
The trademark application rejection review will be conducted in accordance with Article 34 of the Trademark Law and Trademark Examining Rules.
(1) Applicant eligibility: the applicant must be the original applicant whose trademark registration application was rejected by the Trademark Office.
(2) Time limit for application: Starting from the day on which the trademark registration applicant receives the “Trademark Refutation Notice” for their trademark registration application from the Trademark Office, review can be applied within 15 days. A 30-day extension can be applied before the deadline if here has been a delay due to matters that cannot be refused or other legitimate reasons. The TRAB will decide whether the extension is allowed.
(3) Documents required for the application of review:
1. The applicant should submit a “Trademark Registration Application Rejection Review Application Form” to the TRAB (The applicant should fill in the application form seriously, especially giving sufficient reasons for review);
2. The original copy of “Trademark Rejection Notice” or “Partial Trademark Rejection Notice”;
3. The envelope used by the Trademark Office to send the trademark rejection notice (to confirm whether the review is filed within the specified time limit);
4. Other relevant materials and physical evidence;
5. The applicant should declare in the application form if the applicant needs to supplement relevant evidential materials after filing for the review application. Evidential materials should be submitted within 3 months of filing the application. The quantity of the evidential materials should correspond with that of the application. If no declaration has been made in the application form or if the materials are not submitted within the time frame, the applicant will be deemed to have waived the chance to supplement relevant evidential materials;
(4) Fee for rejection review: Review applicants should pay the application fee for the trademark rejection review. Currently the standard fee is $750 per application. Agency fees of agencies will depend on the complexity and difficulty of the case. The agency fee for ordinary cases is $3000.
3. Evidential materials of the trademark rejection review
1. A photocopy of the enterprise license (re-stamped)
2. Trademark idea and usage (used to emphasize its popularity)
3. Enterprise description
4. Various honors obtained by the enterprise
5. Sales, advertising fees, and relevant financial circumstances of the enterprise in the last 3 years
6. The original copy and photocopy of the enterprise’ media reports or photo advertisements
7. The original copy and photocopy of the enterprise’ product appearance
8. Other evidence and materials to prove the enterprise’ products and their popularity
9. Evidential material to show that the said trademark has been in use. Pay extra attention to the following points:
1.: Pay attention to the collection of advertising materials.
All advertising materials are carriers that can be used to prove the actual advertising of the trademark. Advertising materials include: television commercials, movie commercials, radio commercials, newspaper advertisements, magazine advertisements, poster advertisements, car advertisement, gift advertisements, office supplies and everyday supplies etc; Attention: When submitting advertising evidence, some applicants will merely copy and submit sections which only involve themselves. This method is undesirable. I recommend: cropping the entire commercial screen or page and submitting copies of them. It is best if they can show the television channel, radio channel, type of car, type of newspaper, type of magazine, type of gift, type of office supplies etc symbols and dates etc;
2.: Pay attention to the collection of contractual information
As the construction of the Chinese legal system advances, many commercial processes require the signing of a contract. Thus, contractual information cannot be ignored when submitting evidential materials for the trademark rejection review. Especially contracts that have been advertised, such as: television commercial contracts, movie commercial contracts, radio commercial contracts, newspaper advertisement contracts, magazine advertisement contracts, magazine advertisement contracts, car advertisement contracts, gift design and production contracts, office supplies design and purchase contracts, complete contracts of made-to-order staff clothing within everyday supplies, product supply and marketing and service contracts etc;
3.: The collection of official documents and billing information
Official documents include: Documents issued by the State Administration for Industry and Commerce, for example photocopies of the earliest self-employed business licenses and business licenses of companies that registered change at different times; various quality inspection reports issued by the Quality Inspection Department. Please note that the trademark field in the quality inspection report must be filled in. Many applicants omit filling in the trademark field and substitute it with a slash. Moreover, documents issued by the Health Department, Revenues Department, Customs Department, General Administration of Press and Publication, Cultural Department etc that have provable font sizes and trademark use, particularly the duration of trademark use, should be submitted altogether.
Regarding the involved party, the TRAB will study the strength of several evidential materials on each individual fact. The following principles can be adhered:
(1) Official documents produced by the state organs and other functional departments within their authority are better than other documents;
(2) Examination conclusions, archival materials, and notarized or registered documentary evidence are better than other documentary evidence, visual-audio information and witness testimonies;
(3) Original documents and items are better than replicated documents and items;
(4) Examination conclusions made by the Legal Examination Department are better than examination conclusions made by other examination departments;
(5) Original evidence is better than evidence from hearsay;
(6) Testimonies of other witnesses are better than testimonies in favor of the involved party that are made by witnesses who are relatives or are having intimate relationships with the involved party;
(7) Testimonies of witnesses who have participated in a public hearing are better than testimonies of witnesses who have not participated in a public hearing;
(8) Several different types of evidence that have consistent content are better than standalone evidence.
4. Time required for rejection reviews and remedies for unsuccessful trademark rejection reviews:
1. The result will be announced in around 1 year
2. 2 plans can be followed after an unsuccessful trademark rejection review,
Plan 1: Avoid the reasons for rejection and re-register to apply for a new trademark;
Plan 2: Sue the TRAB in the Beijing Intellectual Property Court. Continue to state the applicant’s legitimate reasons through administrative litigation. If you are not satisfied with the decision of the Beijing Intellectual Property Court, you can bring an appeal to the Beijing Municipal High People's Court, thereby lawfully protecting your own legal rights from being infringed.