The Peoples Republic of China Trade Marks Office (TMO) has recently adopted changes in the handling of non-standard descriptions of trade mark goods and services.
Direct Filing with the TMO, including priority applications
As a result of amendments to the PRC Trade Mark Law, the TMO is required to complete examination of a new application within 9 months of filing. As a result of this new procedure, the TMO has adopted a policy of accepting trade marks that include goods and services listed in the TMO’s Similar Goods and Services (10th Edition), being pre-approved goods and services which places “items” of goods and services according to “subclasses”. This index is used by examiners to decide whether individual items conflict with those covered by similar prior marks.
Due to the reduced time to examine applications, examiners are rejecting “non-standard” goods and services, namely those which are not listed in the current TMO index. This is so even if there are subtle differences. Once the goods and services are found to be non-standard, the TMO will issue an Amendment Notice providing the applicant with only one chance to respond. Although the applicant can submit evidence to support acceptance of the non-standard goods/services, the chances of persuading the examiners to accept the terms are low. This is so, even where such terms have previously been accepted.
Furthermore, the TMO is now issuing filing receipts only once the goods and services have been approved. Therefore, if the non-standard goods are not adequately address, the application is rejected and subsequently will be deemed not to have been filed.
Although there are avenues to appeal such decisions, these appeals must be file with the State Administration for Industry and Commerce and the chances of success are generally low.
Extensions of International Registrations (IRs) via the Madrid Protocol
Unlike direct filings, the TMO allows the goods and/or services listed in the IR to proceed through to examination without objection (with the exception of services such as retail services, gambling). This is because WIPO has already approved the IR’s list of goods and/or services once the TMO receives the extension. As a result, the TMO will accept the trade mark even with non-standard goods and/or services. These goods and/or services are then classified according to the appropriate subclass in the TMO’s index.
How foreign nationals should proceed with filing their trade marks in China?
How a brand owner proceeds with filing its trade marks in China will of course depend on the circumstances of each case.
It should be noted however:
- When filing via the Madrid Protocol, although this option would increase the chances of the non-standard goods and/or services being accepted by the TMO, applicants should be aware that in addition to individual country fees, a basic WIPO fee is also payable on filing despite the number of countries designated thereby increase the initial filing costs.
- Where the goods and/or services can be classified according to the TMO’s current index, then it would be possible to file the application directly with the TMO, noting that if an objection is raised on the basis that the goods and services are non-standard, costly and uncertain appeal processes may ensue.
Please contact us if you have any questions concerning the issues raised above.