Evaluating the CNIPA’s attempt to expedite examination of trademark registration applications
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Evaluating the CNIPA’s attempt to expedite examination of trademark registration applications

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Charles Feng and Lian Xue of Tahota Law Firm summarise the main points under a reform of China’s trademark registration application system and consider Japan’s approach in this area

The CNIPA’s issuance of the Measures for the Expedited Examination of Trademark Registration Applications (Trial) (the Measures) on January 14 2022 aimed to implement a reform “streamlining the government, delegating power, and improving government services” in the field of intellectual property, and expedite the examination of certain trademark registration applications.

The Measures stipulate:

  • The situations in which expedited examination can be requested;

  • The conditions for requesting expedited examination;

  • The materials required for requesting expedited examination; and

  • The circumstances under which expedited examination can be terminated. 

The main points of the Measures are as follows.

The criteria for expedited examination

The Measures state that trademark registration applications that fall into one of the following situations can request expedited examination:

  • The trademark involves the name of a major national or provincial project, a major piece of scientific and technological infrastructure, a major event, or a major exhibition, and the protection of the trademark is urgent;

  • The trademark is directly related to responding to a public emergency concerning a natural disaster, a public health emergency, or a major social security incident;

  • The trademark is necessary to promote high-quality economic and social development and implement the national strategy of building a strong country with regard to intellectual property rights; and

  • The trademark has practical significance in terms of safeguarding national interests, public interests, or major regional development strategies.

Requirements for an expedited review

According to the Measures, to meet the requirements for an expedited examination, the trademark registration application must:

  • Be agreed upon by all applicants;

  • Be submitted electronically;

  • Consist only of text; and

  • Not have a priority claim.

If the request for an expedited examination relates to a jointly owned trademark, the names of all the applicants should be listed in the application, which should be signed or stamped by all the applicants.

The Measures do not apply to applications for collective trademarks or certification trademarks. Also, if the designated goods or services for the trademark application are not to be used in the four situations listed above, or if they are non-standard goods or services outside the List of Similar Goods and Services, then the Measures do not apply, and the application can only be examined through the normal process.

Expedited review applications

The application materials required for requesting expedited examination of a trademark registration include a request form for expedited examination of the trademark registration application, relevant materials that comply with the provisions of Article 2 of the Measures, and recommendations for expedited examination from relevant departments of central and state organs, provincial people's governments or their offices, or an auditing opinion on the authenticity of the reasons for the expedited examination request and related materials issued by the provincial intellectual property management department.

The Measures specify that the above materials must be submitted to the CNIPA in paper form.

The procedure after submission of an expedited examination request

If the submitted materials for expedited examination of a trademark registration application comply with the provisions of the Measures, the CNIPA will decide on the examination and complete the examination within 20 working days. For applications that do not comply with the provisions of the Measures, expedited examination will not be granted, and the application will be examined through the normal process as required by law.

Circumstances for terminating an expedited examination procedure

The expedited examination procedure may be terminated, and the application will be examined through the normal process as required by law, if:

  • The trademark registration application needs to be corrected, explained, or revised in accordance with the law;

  • It is subject to examination procedures for applications filed on the same day;

  • The trademark applicant requests a deferral of examination; or

  • There are other circumstances that cannot be examined quickly.

Comparison of expedited examination of Chinese and Japanese trademark registration applications

Unlike in China, Japan has two expedited examination procedures for trademark registration applications:

  • The early examination procedure; and

  • The expedited examination procedure.

Early examination procedure for trademark registration applications in Japan

For trademark registration applications in Japan, an early examination may be applied for if one of the following conditions is met:

  • The applicant or the licensee has used, or is preparing to use, the applied-for trademark on the designated goods or services, and the applicant or the licensee urgently needs to obtain trademark rights. In terms of "urgently needing to obtain trademark rights", the following circumstances may be considered:

    • A third party is using, or preparing to use, the applied-for trademark without authorisation;

    • The applicant or the licensee has received a warning from a third party regarding the use of, or preparing to use, the applied-for trademark;

    • A third party wishes to obtain a licence to use the applied-for trademark;

    • The applicant has filed a trademark application in a country other than Japan; and

    • The applicant intends to file an international trademark registration application under the Madrid System based on the applied-for trademark.

  • The designated goods or services of the applied-for trademark have already been used, or they are being prepared to be used, by the applicant or the licensee. If there is no evidence of use, or preparation for use, for some goods or services in the designated goods or services, the relevant goods or services must be deleted.

  • The applicant or the licensee has already used, or is preparing to use, the applied-for trademark on some of the designated goods or services, and the designated goods or services are normative goods or services names listed in the Similar Goods and Services Examination Guidelines and other related regulations.

Expedited examination procedure for trademark registration applications in Japan

If a trademark registration application in Japan meets the following two conditions, it will automatically enter the expedited examination procedure after the application is submitted, and the applicant does not need to apply:

  • The designated goods or services of the applied-for trademark are normative goods or services names that meet the requirements of the Similar Goods and Services Examination Guidelines, the Trademark Law Enforcement Rules, or the International Classification of Goods and Services (the Nice Classification); and

  • No changes have been made to the designated goods or services between the submission of the application and the examination.

However, for new types of trademarks (including dynamic trademarks, certain three-dimensional trademarks, colour combination trademarks, sound trademarks, and position trademarks) and Madrid System applications that extend to Japan, neither the early examination nor the expedited examination procedures are applicable, and they can only be examined through the normal process.

Analysis of the expedited examination procedures in China and Japan

Trademarks combine private rights and public and social interests. On the one hand, trademarks are commercial marks that identify the source of goods or services. On the other hand, trademarks are closely related to national interests and social public interests.

In terms of the expedited examination system for trademark registration applications in China and Japan, the promulgation of the Measures in China and the establishment of an early examination procedure in Japan have improved the trademark examination system to varying degrees and better meet the differentiated needs of market entities. Furthermore, they have shortened the examination time for trademark applications and improved the efficiency of trademark examination.

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