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A GENERAL INTRODUCTION TO CHANGES OF THE NEWLY REVISED TRADEMARK EXAMINATION & TRIAL GUIDELINE
Yu GAO
Chinese Trademark Attorney
Trademark Department
Linda Liu & Partners
China Trademark Office recently published the newly revised version of Trademark Examination & Trial Guideline (hereinafter referred to as “the new guideline”) on January 4, 2017. This version is amended to adapt to the 3rd amendment of the Trademark Law of China and there are some substantive changes in the content, which is worthy of a careful reading and studying by relevant trademark practitioner. For the convenience of readers, I would like to give a general introduction of the changes of the new guideline.
I. On the trademark examination guideline
The new trademark examination guideline is composed of 11 parts which is increased from 7 parts of the old guideline. The new guideline increases the parts including: the examination of sound trademark, the examination of trademarks filed by trademark agencies, the application of the 50th article of the Trademark Law, and the application of examination opinion. Furthermore, some important articles have been added and amended. We would like to summarize the changes as follows:
1. Addition of the applying situations of Article 10 (1) (vii) of the Trademark Law
The 3rd amendment of the Trademark Law in 2013 adds the Article 10 (1) (vii), i.e. “The following signs shall not be used as trademarks: those having the nature of fraud which is likely to cause misunderstanding of the characteristics, such as quality of the goods or origin of production, etc., among the relevant public”. The new guideline makes detailed standards on the applying of this article, which mainly includes two sorts “signs that are likely to mislead the public in terms of features like quality, characters, functions, usages, raw materials, content, weight, quantity, price, crafts, techniques, etc.” and “signs that are likely to mislead the public on places of production and origins of goods and services”. Some of situations are from the applying situations of Article 10 (1) (vii), i.e. “signs having the nature of exaggeration and fraud in advertising goods” and Article 10 (1) (viii), i.e. “signs detrimental to socialist morality or customs, or having other unhealthy influences” of the Trademark Law of 2002 in the old guideline. In the meantime, the applying situation “signs that are composed of other natural person’s name without authorized and are likely to mislead the public on sources of the goods and services” has been added in the new guideline.
2. Adjustment and addition of applying situations of Article 10 (1) (viii) of the Trademark Law
About Article 10 (1) (viii) of the Trademark Law, except deleting and adjusting “signs having the nature of exaggeration and fraud in advertising goods” and “signs detrimental to socialist morality or customs, or having other unhealthy influences” into the applying situations of Article 10 (1) (vii) of the Trademark Law of 2013, the new guideline changes the situation “trademarks containing words that are identical with or similar to our State name shall apply to Article 10 (1) (ii)” prescribed in the old guideline into “trademarks containing our State name which will lead to the misuse of our State names and may bring other passive and negative influences to social public interests and order shall be apply to Article 10 (1) (viii) of the Trademark Law.” In addition, the new guideline adds two situations, namely, “trademarks containing non-standard Chinese characters or non-standard use of idioms which may mislead the public, especially juvenile” and “trademarks containing characters which are identical with or similar to names of political, religious, historical figures, etc. which may bring about passive or negative influences. ”
3. Deletion of some of the applying situations of Article (2) of the Trademark Law
The old guideline contained an exception to trademarks containing geographical names as the administrative divisions at or above the county level of Article 10 (2) of the Trademark Law, i.e. “the name of the applicant contains a geographical name, and the applicant filed its full name for trademark registration”. But the new guideline deletes this exception. As for whether a full company name containing a geographical name as the administrative division at or above the county level could be approved for trademark registration, it is subject to a further interpretation and the practical case examinations by the authorities.
4. Revision and specification of the trademark examination standards of 3-dimensional trademarks, color combination trademarks, collective trademarks, and certification trademarks; addition of examination standards of sound trademarks
Based on standards of the old guideline, the new guideline specifies the examination standards of 3-dimension trademarks, color combination trademarks, collective trademarks, and certification trademarks.
For 3-dimentional trademarks, the new guideline confirms that the applicant could submit trademark specimens in forms of “3-dimentional view, multiaspect view or 3-dimensional effective sketch” in the formality examination procedure. In the substantive examination, the new guideline adds the content of the examination based on the article of prohibiting for use. With regards to the examination of distinctiveness of 3-dimentional trademarks, the new guideline further specifies the situations of devoid of distinctiveness. In particular, the new guideline adds the examination standards of 3-dimentional trademarks composed of “a combination of 3-dimentional signs and other plane elements” which confirms “trademarks composed of indistinctive 3-dimensional elements and other distinctive plane are distinctive, but the scope of the exclusive right shall be limited to the plane part. And notes shall be added on the Preliminarily Approval Trademark Gazettes and Trademark Registration Certificates.” With respect to the examination of identical and similar trademarks, the new guideline adds “for 3-dimentional trademarks composed of distinctive 3-dimentioanl elements and distinctive plane elements, if the plane elements are similar to plane trademarks of other trademarks, which are likely to confuse and mislead the relevant public, they shall be taken identical or similar”.
For color combination trademarks, the new guideline adds forms of trademark specimens for filing, that is, in addition to color blocks, “contours showing use position of colors” and “contours that are not the composing elements of the trademark should be made in dashes”. In addition, “the detailed use manner of the color combination trademarks shall be stated in the application. For distinctiveness of color combination trademarks, the new guideline confirms that “usually, the distinctiveness of color combination trademarks shall be obtained through long time use. The Trademark Office could issue an Examination Opinion requesting the applicant to submit the use evidence and explain that the trademark has obtained distinctiveness through use.”
For sound trademarks, the new guideline adds the examination standards for formality examination and substantive examination. Similar to color combination trademarks, the new guideline also confirms that a trademark use description shall be submitted in the application; and a sound trademark shall obtain distinctiveness through long time use, and the Trademark Office could issue an Examination Opinion.
For collective and certification trademarks, the new guideline mainly changes the examination on production areas of products of geographical indication collective and certification trademark from the previous requirement on the scope “confirmation issued by the industrial authority at or above provincial level” into “areas could be the geographical scope described in county annals, agricultural annals, product annals, yearbooks, textbooks, or the areas could be confirmed by the geographical scope certification documents issued by the local county level or the industrial authority of the above level. The new guideline also adds that administrative divisions could be one form of geographical production scopes.
5. Addition of examination standards on trademark registration applications filed by trademark agencies
The new guideline adds the examination standards on trademark registration applications filed by trademark agencies. According to the new guideline, the agency services of trademark agencies belong to the subclass 4506 of the Classification of Similar Goods and Services (based on NICE classification 10th version).
6. Change of trademark similarity standards from “misleading” to confusing”
The new guideline does not make great changes on the examination standards of identical or similar trademarks. It mainly changes trademark similarity standards from previous “likely to mislead the relevant public on the sources of goods and services” to “likely to confuse the relevant public on sources of the goods or services”, which confirms and emphasizes “confusion” as the basis of determining similarity of trademarks. In addition, the new guideline also adjusts the language and logical sequence of the articles and some new case examples have been added for each article.
7. Addition of the application of Examination Opinion
The new guideline adds the application of Examination Opinion and confirms the applying situations of Examination Opinion, such as when there are possibilities of applying provisos of Article 10 (1) (ii), (iii), (iv), and Article 10 (2) of the Trademark Law; when there are possibilities of applying provisos of Article 11 (2); the trademark may be approved through explanation by the applicant; when color combination trademarks or sound trademarks that are insufficient to confirm its distinctiveness based on filing documents, while it may be approved after the applicant submits evidence to show that it obtains distinctiveness through long-time use, etc. The new guideline also makes detailed regulations on the substantive examination of Examination Opinion.
II. On Trademark Trial Guideline
The amended trademark trial guideline increases from 8 parts in the old guideline to 10 parts, which include the addition of standards of trademarks preemptively filed by persons of special relationship and the determination of related persons.
1. Standards on trademarks which are reproductions or imitations of others’ well-known trademarks
Regarding Article 13 of the Trademark Law, the new guideline makes some supplements, mainly including following respects:
(1) Addition of recognizing principles of well-known trademarks;
(2) Deletion of “intangible asset evaluation reports” as evidential forms, addition of evidential forms such as “industrial rankings or market share”, “patent inventions and independent innovations”, and “techniques of the goods or services with which the trademarks are used have been adopted as national standards or industrial standards”, etc.;
(3) Making stricter requirements on evidence, e.g. requiring submitting original or notarized copies of company annual reports and tax amount, etc. ; requiring submitting sales contracts or sales invoices, etc. to prove that the goods and services with the trademarks have been sold or operated in many provinces;
(4) Confirming the requirement on the use period of the well-known trademark: for unregistered trademark, it shall submit evidential materials within no less than 5 years while, for registered trademarks, it shall submit evidential materials showing that it has been registered for no less than 3 years or continuously used for no less than 5 years;
(5) Clear distinctions have been made on the possibility of confusion and misleading;
(6) Amending protecting conditions of registered well-known trademarks on non-identical or dissimilar goods and services from “possibilities of confusion and misleading” into “likely to mislead the public which may damage the interests of registrant of well-known trademarks.”
2. Standards of trademarks filed by agents or representatives
Regarding the application of the 1st paragraph of Article 15 of the Trademark Law, the new guideline mainly adds the application of the article to the situation that the agent or representative preemptively files the trademark of the owner during the consultation period of the agency or representation relations. In addition, for the determination of obtaining the authority by the agent or representative, the new guideline adds two situations of “the person being acted or represented does not make an objection within reasonable duration” and “the person being acted or represented become repentant afterwards”.
3. Standards on preemptive registration of prior used trademarks of others by persons of special relations
Regarding the application of the Article 15 (2) of the Trademark Law, the new guideline adds the standards on preemptive registrations of prior used trademarks of others by persons of special relation which confirms that “relations of contracts and business interactions” include “relation of trade”, “relation of commissioned processing”, “business survey”, “relation of consultation”, etc. and the common other relations include “kinship”, “subordinate relation”, etc. In addition, as to the “prior use” prescribed in the law, it includes not only the actual use on goods and services, but also includes the preparations made for entering the Chinese market. In addition, the new guideline also confirms that the prior user should only prove the mark has been prior used and it is not necessary to prove that the trademark has obtained certain reputation through use.
4. Standards on preemptive registrations of prior used trademarks by others
Based on “an application for the registration of a trademark shall not create any prejudice to the prior right of another person” prescribed in the Article 32 of the Trademark Law, the new guideline makes the following amendments:
(1) Trade name right
Regarding the trade name right, the determining factor on whether the disputed mark is likely to confuse the public has been changed in the new guideline. According to the new guideline, the determining factor in principle is that the disputed mark shall be identical with or basically identical with the prior trade name and the designated goods of the disputed mark shall be limited by the actual business operated by the trade name owner. But in individual cases, the protection scope could be determined by factors like the uniqueness of the trademark, the reputation of the trademark, and the extent of relevance of the goods/services.
(2) Copyright
With regard to copyright, the new guideline confirms that “trademark registration certificate or copyright registration certificate registered later than the application of the disputed mark alone shall not be adopted as the basis of finding the tenability of the copyright.
(3) Design patent
The main change of the design patent is that the new guideline deletes the former applying condition, that is, “the disputed mark and the design patent shall be used on identical or similar goods”.
(4) Name right
Regarding the name right, the new guideline changes the applying condition from “the disputed mark shall be identical with others’ names” into “in the public knowledge, the disputed mark directs to the name right holder” and deleted the content “the awareness of the public to the name right holder shall be considered in determining whether the disputed mark damages other’s name right”. In the meantime, the new guideline enlarges the scope of damaging the name right into “it includes not only marks identical with other’s names and but also marks that are different from other’s name but could reflect other’s main characters and the mark directs to the name right holder in the public’s awareness. ”
(5) Portrait right
The main changes regarding the portrait right in the new guideline is that the different protections of portrait photos and portraitures, namely, for trademarks containing portrait photos, the protection is given without considering the public awareness while, on the contrary, for trademarks containing portraitures, the protection is given on the account of the public awareness.
(6) Addition of protection of lawful prior interests
Besides the protection of traditional prior rights, the new guideline added the protection standards of prior legal interests including special names of famous goods/services, packages, decorations. At the same time, the guideline adds the content of “other lawfully protected prior interests”.
5. Standards on trademark registrations obtained via fraud or other unfair means
For the application of the Article 44 (1) of the Trademark Law, the new guideline makes an evident change, namely, defining “other unfair means” into “acts of the registrant of the disputed mark that disturb the trademark registration order, damage public interests through unfair means other than fraud which damages public interests, occupy public resources, procure illegitimate interests, or obtain registration through other unfair means.” Situations like the applicant of the disputed marks filed many registrations which are identical with or similar to other’s trade names and company names, etc.; the applicant of the disputed mark filed a large number of trademarks without actual use intention are added into the applying situations in the new guideline.
6. Standards of Trademark Registration Cancellations
For standards of trademark registration cancellation cases, the change of the new guideline is reflected in the content that evidence and situations which could not be deemed as use in the sense of the Trademark Law. The new guideline also confirms that “if the main parts of the trademark in the evidence are altered, the evidence shall not be able to prove the use of the registered trademark.” and “provided that the registered trademark is used on the designated goods, the trademark on the similar goods shall be maintained. The use of the registered mark on similar goods other than the designated goods shall not be deemed the use of the registered trademark.”
7. Standards which trademarks acquire distinctiveness through use.
For signs which become distinctive through use, the new guideline mainly specifies factors “production, sales, promotion of the goods and services carrying the mark” into “sales volume, turnover, market shares, advertisement promotion, and covering scope”. For evidential materials, the new guideline requires that “the evidence shall show the use of the trademark, goods and services, date of use, and the name of the user. The users include the trademark applicants and their licensees.” In addition, the new guideline distinguishes different stages of cases: for refusal review cases and trademark non-approval cases, the examination shall be based on facts at the time of examination; for invalidation cases, the examination shall be based on the facts at time of the registration.
8. Determination of interested parties
The new guideline abridges the standards of determination of interested parties in different parts in the old guideline and added one part for determination of interested parties. The new guideline confirms that the licensee, legal successor, and pledgee belong to the interested parties. In addition, the new guideline also confirms that persons who are not connected at time of filing but become connected at the time of examination shall be deemed as interested parties.
