China: Better services for trademark owners


Xiang Gao

For 13 consecutive years, China has handled the most trademark applications and registrations. According to statistics, by September 2015 the cumulative number of trademark applications in China amounted to 17.6 million and the total number of trademark registrations was 11.8 million.

To better protect exclusive trademark rights, the third amendment to the trademark law became effective on May 1, 2014. Since then, the China Trademark Office (CTMO) has also been taking some policy measures to further improve services for trademark applicants.

On March 24, 2016, the CTMO announced seven measures online.

1. Based on problems encountered in the practice of accepting trademark applications, and the implementation of new trademark law and implementing regulations, the CTMO published answers to frequently asked questions (FAQs) about the procedure for trademark registration online on March 21, 2016.

2. In order to reduce trademark applicants’ burden and shorten the processing time, the CTMO does not require notarisation of evidential materials for a trademark application which is a portrait or name of a celebrity; for a trademark transfer or cancellation; or for correction of a foreign applicant’s name or address. 

3. To provide better guidance to an applicant’s amendment, in the notification of requirement for amendment some explanatory or instructional content will be added according to the specific circumstances, so that the applicant may amend its application more accurately.

"The CTMO is optimising its website by regulating the setup of some columns, updating the contents more quickly, improving the stability of the site."

4. In some opposition cases, one set of evidence can be shared if the evidence used is totally identical (not partially identical). Generally, the complete set of evidence is submitted with the first opposition filed according to the date of filing. As for other oppositions which can be supported by the same set of evidence, the applicant may not provide the same but must indicate the case of the first opposition with which the evidence is submitted, namely, the provisional number of the mark first opposed or the receipt number of the filing of the first opposition.

5. If both parties are identical, or the opposed marks are identical, or the same set of evidence is shared, or both parties file oppositions against each other, those cases can be put together for examination. Any party can propose other reasons for examination together, and the CTMO may examine them together if it deems the reasons acceptable.

6. Concerning some post-registration matters such as change of an applicant’s or registrant’s name or address, trademark assignment, or trademark renewal which an applicant, on the basis of urgent or serious grounds, believes is necessary for the CTMO to speed up examination, the applicant can submit a written request for acceleration. If the CTMO thinks the request eligible, it will speed up the examination so that the waiting time for the certificates can be shortened.

7. The CTMO is optimising its website by regulating the setup of some columns, updating the contents more quickly, improving the stability of the site, improving the function of search for trademark status, and adding information concerning receipt and return of documents.

The FAQs concerning #1 are in Chinese only. Those concerning #3 will be very helpful, especially for foreign applicants or their agents. The CTMO adopts the international classification of goods and services under the Nice Agreement (10th edition). The CTMO edits a classification table which includes both the goods and services translated and modified from the Nice Classification and some goods and services of Chinese characteristics added by the CTMO. In the table, the goods and services are further arranged in sub-classes with headings and indications of similarity or dissimilarity among sub-classes.

In each national application, descriptions of goods or services shall be standard as provided in the classification table or specific (not too ambiguous or broad) if no standard terms can be used. Therefore in practice, national applications filed with a non-standard or ambiguous specification may often encounter office actions requiring amendments from the CTMO examiners. Sometimes the examiners point out the non-standard items but fail to give clues about amendments. It is hoped that the applicants or their agents can make responses to office actions more efficiently in the future.

Xiang Gao is a partner at Peksung Intellectual Property and head of its trademarks department. He can be contacted at: 

Xiang Gao, Peksung Intellectual Property, trademark, applications, China Trademark Office, transfer,