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Sherry MENG
Chinese trademark attorney
Linda Liu & Partners

 
The long examination period of trademarks used to be on the top of the agenda for China. The pending period from application to registration of a trademark was as long as 36 months¹ in 2007! China National Intellectual Property Administration (hereinafter referred to as “CNIPA”) has taken a series of initiatives to solve this problem over the years, especially in 2013 when making the third amendment to the Trademark Law, the time limit for examination of trademark cases was clarified for the first time, e.g. the time limit of examination of trademark applications was 9 months. The average examination period of trademark applications has been shortened to 4.5 months² by the end of 2019, and is expected to be further shortened to 4 months³ by the end of 2021. At present, among the cases represented by the author, there have been cases where the application has been published or rejected in just over 3 months, and it is obvious that the CNIPA has reached the target ahead of the schedule.
 
The shortening of the examination period of Chinese trademark applications is a good thing for trademark applicants, which directly shortens the time for registering trademarks and improves the efficiency of trademark registration. However, as the old saying goes “Whatever gains in one respect loses in another”, and the accelerated examination also brings problems to the trademark applications claiming priority, and as the speed of examination continues to accelerate, this problem might be more and more prominent in the future.
 
Article 25 of the Trademark Law of the People's Republic of China stipulates that where if an applicant files an application for trademark registration in China for the identical trademark on the identical goods within six months from the date of the first application for trademark registration in a foreign country, he or she may enjoy priority in accordance with the agreement signed between the foreign country and China or the international treaty to which the foreign country is a party, or in accordance with the principle of mutual recognition of priority. In short, even if the applicant files a trademark application in China later than a third party, as long as the applicant has filed the relevant trademark application in the particular foreign country first, its trademark application in China enjoys priority against the third party's application.

In the past when the examination period for trademark applications was long, generally a trademark applicant claiming priority could successfully prevent a third party's pre-emptive registration in China as long as the applicant himself files such trademark application in China within the six months prescribed by law and the priority is found to be valid, even it is filed nearing the expiratory date of six months. Because there is a high possibility that the third party's trademark application is still in the pipeline for examination, and there is sufficient time for the information of the trademark application claiming priority to be entered into the system of the CNIPA, the examiner will, based on that priority date, reject the identical or similar trademark on the identical or similar goods/services of the third party in China later than that priority date in accordance with law.
 
However, with the continuous shortening of the examination period of trademark applications, trademarks claiming priority rights have started to encounter obstacles on the way to trademark right affirmation. The author herein gives further explanation by sharing real cases.
 
Problem 1: When a trademark application claiming priority is rejected due to a third party's identical or similar trademark on the identical or similar goods/services with an earlier domestic filing date, the time as well as the cost for the applicant to obtain the trademark right is greatly increased.
 
Since there is a 6-month period for claiming priority, many foreign applicants often decide to file trademark applications in China when the 6-month period is about to expire. Due to the shortened examination period of trademark applications nowadays, it is highly likely that identical or similar trademarks on identical or similar goods/services filed by third party earlier will pass the substantive examination and be published first, while later applications claiming priority may be rejected. Although the priority could successfully overcome grounds for refusal in the refusal review procedure, it unjustifiably prolongs the time required for trademark right grant and affirmation and increases the cost of trademark registration.
Take Trademark No. G1491798 (Class 30) “”as an example. It is clear from the published review decision on trademark refusal that the CNIPA cited Trademark No. 35625707" " (application date: December 28, 2018), Trademark No. 35825329 "" (application date: January 9, 2019) to reject its application, but in the review proceeding, given that the priority date of the applied-for trademark-December 11, 2018 was earlier than the application date of the 2 cited trademarks, the CNIPA finally approved⁴ the territorial extension of protection of trademark No. G1491798 in China on the goods in Class 30 requested for  review.
Another example is trademark No. 42070065 "". According to its review decision on refusal, the CNIPA cited four prior trademarks to reject its registration application, but among them, the filing date of the cited trademark No. 41221160 "" and No. 41348323  "is September 23, 2019, which is later than the valid priority date of the applied-for-mark, July 22, 2019, therefore, the CNIPA finally held that the cited trademarks No. 41221160 and No. 41348323 do not constitute prior obstacles⁵ to applied-for-mark to be granted.
 
Problem 2: Both the trademark claiming priority and the third party's pre-emptive applied trademark pass the preliminary examination or get registered
 
Even if there is a prior trademark filed by third party earlier, it is possible that the later application claiming priority can be successfully published and get registered without being rejected since the latter has earlier foreign filing date. However, it is also possible that a third party's prior trademark application may pass the substantive examination. This will lead to a situation where identical or similar trademarks on identical or similar goods/services being published, or even co-existed in registration.
 
For example, "GLAVION" is a trade name trademark of a Canadian company who filed a trademark application in China on April 23, 2020, and claimed priority with the priority date of October 24, 2019. On December 10, 2019, a Chinese company preemptively filed an application for the identical trademark on the identical or similar good. The published information on CNIPA website shows that the Chinese company's trademark was published in May 2020, while the Canadian company's trademark was published in December 2020. Fortunately, the Canadian company spotted the trademark applied by the Chinese company and filed an opposition against it. In the opposition case, the CNIPA cancelled⁶ the Chinese company's trademark registration application because of the valid priority date enjoyed by the Canadian company.
 

 

 
In view of the objective and real existence of the above cases, both the CNIPA and the trademark applicants who want to claim priority should pay attention to these problems and think about the strategies to deal with them.
 
From the perspective of the CNIPA, while it is important to accelerate the speed of the trademark examination, the quality of examination should not be ignored. However, in view of the current examination speed, there seems no effective way in the substantive examination stage, and the CNIPA can only consider taking some remedial measures in the following proceedings in the future. For example, when the examiner conducts substantive examination on the trademark application claiming priority, in the absence of other reasons for rejection, if it is found that a third party’s trademark (the identical or similar trademark on the identical or similar goods/services) of which the application date is later than the priority date has been published or approved, they can directly publish the trademark claiming priority, and report the third party’s trademark at issue to the higher-level examination department who can either take the initiative to withdraw the publication of the third party's trademark in question or declare the registered one invalid after confirming the relevant facts. Unfortunately, there is no such relevant provision in the existing Trademark Law and the Implementing Regulations of the Trademark Law. So, for the time being, we can only hope that the CNIPA will consider the situation and add the relevant corresponding provisions when making the law amendment the next time.
 
By contrast, obviously it would be more effective for the trademark applicant who claims priority to take active measures for the time being. The author hereby puts forward the following suggestions.
 
1. Even for the trademark claiming priority, the trademark application should be filed in China as early as possible to minimize the chances of the said problems.
 
The earlier the filing date, the higher the possibility of successfully preventing a third party from registering the identical or similar trademark on the identical or similar goods/services. This is also the most cost effective way. Therefore, applicants are advised to file trademark applications in China as early as possible.
 
2. Conduct trademark search before or after filing to find out whether there is a third party’s trademark at issue as early as possible
Applicants can conduct trademark search before or after filing. A trademark search can discover whether there is an identical or similar trademark on the identical or similar goods/services that is applied earlier. If a trademark at issue exists, its status can be monitored subsequently and timely countermeasures can be taken.
 
3. If the trademark at issue filed by third party is still in application proceeding, it is advisable to submit a statement and request the CNIPA to reject its registration application.
 
If it is found that the trademark at issue filed by third party is still waiting for substantive examination, it is suggested that the applicant submit a statement to the CNIPA based on the his trademark application claiming priority, explaining the relevant situation and requesting the CNIPA to reject the application of the trademark at issue filed by the third party. If the priority claimed by the applicant is valid, it is highly likely for the CNIPA to initiatively reject the registration application of trademark at issue filed by third party.
 
4. If the trademark at issue filed by a third party has been published or registered, an opposition or invalidation should be filed early.
 
In this case, the applicant is recommended to file an opposition or invalidation against the third party's trademark at issue early. If the priority claimed by the applicant is valid, the chances of winning the opposition or invalidation are still relatively high. However, it should be noted that in the case of similar trademarks on the identical or similar goods/services, the success of opposition or invalidation will also depend on other factors such as the degree of similarity of the trademarks and whether the opposing party has malice to imitate.
 

（2022）