Changes to China’s Trade Mark Laws May Make Some ‘Hot Under The Collar’

We recently posted on how changes to China’s trade mark laws might impact Australian businesses. China’s new trade mark laws come into effect on 1 May 2014.

In particular, the Chinese Government will attempt to speed up trade mark application prosecution, implementing time limits of between 9 to 18 months for examining trade mark applications, and for reviewing appeals to the refusal of trade mark applications and considering oppositions.

In practice, it can take many years to obtain a trade mark registration in China, so this would appear to be good news for Australian business seeking to protect their trade marks in China.

However, with the recent publication of the ‘Draft Implementing Regulations for the Trademark Law of the People’s Republic of China’, the sped-up prosecution timelines may force Australian businesses and their legal representatives to be ‘on their toes’ more than ever before.

The draft regulations provide the following:

  • The deadline to respond to office actions issued by the Chinese Trade Mark Office will reduce from 30 days to 15 days. This 15 day deadline is equivalent to the current timeline for filing a review with the Chinese Trade Mark Adjudication and Review Board once an application has been refused.
  • The deadline for filing supplemental evidence and submissions in support of a trade mark opposition or in support of an application for review of a refused application will be shortened from 3 months to 30 days. This will place significant pressure on opponents, or applicants of refused applications, to collate evidence quickly.

There may be an opportunity to submit evidence after the 30 day deadline, but the evidence will only be considered if it has a substantial impact on the opposition decision.

Interestingly, the draft regulations also provide the following:

  • If an opposition is filed in respect of only some of the designated goods/services, the trade mark applicant is allowed to apply to split its application within 15 days upon receipt of the Ground(s) of Opposition from Chinese Trade Mark Office. Thus, the opposed application will be allowed to proceed to registration in respect of the unopposed goods/services. If the Chinese Trade Mark Office issues an opposition decision refusing to register the mark in respect of only some of the goods/services, the applicant can also apply to split the application.
  • Where a review of a refused trade mark application is requested, and where the Chinese Trade Mark Adjudication and Review Board indicates the review is partially successful, the trade mark applicant can apply to split its application within 15 days. This will at least provide trade mark protection for some of the goods/services of the application.

Given the millions of trade mark applications filed in China each year (Since about 2001, China has been ranked No. 1 in trade mark application filings), it will be interesting to see if the Chinese Government can successfully reduce the timelines for prosecuting Chinese trade mark applications. As the Chinese Patent Office is now the world’s biggest, one would assume that a similar investment is being made in the Chinese Trade Mark Office to increase examiner numbers.

We will keep you posted on any further changes to the implementing regulations.

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