Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
Richard (Yu) GAO
Junior Partner
Trademark Attorney
Assistant Manager of Trademark Department
Welcome to Linda Liu & Partners on air！
My name’s Richard GAO and I’m a trademark attorney from the trademark department in Linda Liu & Partners. It’s my great honour to share with you some suggestions for trademark filings in China.
As it is widely known, there are an increasing number of new trademark applications per year in China. In the year of 2019, around 7.8 million trademarks were newly filed. By last June, there were over 22 million valid trademark registrations. Due to these large number of prior marks, the general refusal rate of new trademarks is over 30%.
In the meantime, the trademark examination period has been shortened. According to the Trademark Law of China, the examination on a new trademark application shall be completed in 9 months. To comply with the Law, China IP Office has shortened its trademark examination period to 5~7 months. It is even shorter for the examination period on a territorial extension of an international registration. Upon refusal, the applicant may file a review on the refusal. The examination of refusal review is also quick, for about 6-8 months in average. According to the current practice, the extension of the refusal review examination is not allowed.
Typically, if a refusal is made due to prior rights of third parties, it is necessary to take parallel actions against prior rights. Because these actions relate to other parties, the examinations on such actions will be longer, e.g. a non-use cancelation will take about 9-12 months, an invalidation action takes 11-13 months, and an opposition action, for about 13-15 months.
If an applicant receives a refusal made due to prior marks which are confusingly similar to the applied mark, it is already a bit late to file a refusal review and take parallel actions against prior marks. Though the applicant could later file an administrative litigation against the unfavorable review decision of refusal and wait for the result of parallel action, it will have to spend much more cost and wait for an uncertain result.
To save cost and time for registering trademarks in China, we propose following suggestions:
First suggestion: Conducting trademark searches
Instead of taking actions when the applied mark is rejected, we suggest the applicant conduct trademark availability searches in advance. By trademark searches, the applicant could have an early knowledge of potential conflicts and take actions at an early stage. This will give applicants more time to wait for the action results and increase the chances in the trademark registration applications.
Second suggestion:Claiming priority
If the client has an equal trademark application oversea, it is advisable to claim the priority. We could first conduct a trademark search when the oversea trademark is first filed. If a clear prior conflicting mark in China is disclosed in the search, the applicant could first take actions against the prior right and file the trademark application by the end of the priority period. This will win more time for the actions against the prior mark.
Third suggestion:Suspension request
According to the current practice, China IP Office could suspend its examination on a new trademark application upon receipt of the written request of the applicant. This is not a formal procedure. But in our practice, many suspension requests have been granted. When an action is taken against a prior mark, the applicant could submit a suspension request for a try.
Fourth suggestion:Refiling of trademarks
If a trademark is unfortunately rejected based on prior rights and the applicant wishes to take actions against prior rights, in addition to filing a refusal review, a prompt re-filing is also recommended. Such re-filing may act as a back-up when the review decision is not in the applicant’s favor. However, it is possible that new marks are cited in the examination of the re-filing.
We hope our above suggestions could help applicants to file trademark applications in China “smartly” and save their costs and time to secure their trademark right.
And if you would like more discussions about this topic, you can find via our email address: trademark@lindapatent.com.
As a leading patent law firm in China, we are always glad to help.
