China trademark examination standards is quite important for both applicants and those agents, since only with a good understanding of these rules can the risk of refusal be reduced. The State Administration for Industry and Commerce of China (SAIC) has published on 4 January 2017 a latest revision to the Trademark Examination and Review Standards, which was made to accommodate changes brought by the revision of the Chinese Trademark Law in 2013. The examination criteria are judicial rules (different from PRC Trademark Law or Regulations of Implementation of the PRC Trademark Law) which can be cited as legal bases in trademark prosecutions.
Important Changes
1. New criteria for sound marks;
2. Explicitly stipulating the adoption of legal documents;
3. Refining Article 19.4 of the PRC Trademark Lawli Detailing Article 50 of the PRC Trademark Lawli 4. Refining Article 15.2 of the PRC Trademark Law;
5. Explicitly stipulating the identified conditions for "interested party";
6. Explicitly stipulating the adoption of Article 44.1 of the PRC Trademark law;
7. Amending the rules concerning Article 10 of the PRC Trademark Law.
Details of some of these changes are as follows:
1. 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.
2. Examination of an Application filed by an Agency in its Own Name
In accordance with Paragraph 4 of Article 19 of the Trademark Law and Article 87 of Implementation Regulations, except for applying to register trademarks in relation to its agency service, a trademark agency shall not register other trademarks.
The Standards further provide that during formality examination, an application filed by a trademark agency to register a mark in relation to other goods or services than its agency service would not be preliminarily accepted; those have been preliminarily accepted would be rejected during substantial 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.
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.
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