On 13 January this year, the China National Intellectual Property Administration (CNIPA) issued a notification on soliciting public opinions regarding the draft revision to the China Trademark Law. The draft is published on CNIPA’s website (in Chinese) to solicit public opinions until 27 February 2023.

The first part of this report introduced the draft and summarised the proposed changes to substantive examination. In this second part, Ling Zhao, Shufang Zhang, Xiaoping Wei, Qin Li and Lei Fu focus on procedural changes.

Procedures

Non-acceptance of trade marks found to have significant negative effects

The draft provides that if the IP administrative department of the State Council finds that the trade mark applied for registration obviously has significant negative effects, it shall not accept the application during the formality examination stage.

Preliminary examination opinion

The draft provides that during the examination process, if the IP administrative department of the State Council believes that the content of the trade mark registration application needs to be explained or amended, it may issue a preliminary examination opinion to require the applicant to make an explanation or amendment.

If the applicant fails to make an explanation or amendment, it will not affect the examination decision made by the IP administrative department of the State Council.

Revocation of publication of preliminary approval

For trade marks that are found to violate the provisions of Article 15 [signs not allowed to be used as trade marks] after the preliminary approval, the draft provides that the publication of the preliminary approval can be revoked ex officio.

Opposition procedure

The draft shortens the publication period of a preliminarily approved application to two months for filing opposition (Article 36).

The draft cancels the procedure of review of opposition totally. If the IP administrative department of the State Council makes a decision to disapprove of registration, and the opposed party is not satisfied, they may file a lawsuit in a people's court within 30 days from the date of receipt of the decision (Article 39).

Suspension of procedure

The draft unifies the provisions on the suspension of the procedure and adds provisions that the people’s courts do not apply the principle of change of circumstances in the trial of administrative cases of trade mark authorisation and confirmation.

In the processes of trade mark examination and trial, the IP administrative department of the State Council may suspend the examination and review if the determination of the prior rights involved must be based on the results of another case that is being tried by the people's court or being handled by the administrative agency.

After the reasons for the suspension are eliminated, the examination and review procedures shall be resumed in a timely manner.

When the people's court hears the decision of refusal review, decision of non-registration or ruling of invalidation made by the IP administrative department of the State Council, it shall take the factual status at the time of the relevant decision or ruling being made as the basis.

If the status of the relevant trade mark changes after the decision or ruling is made, it will not affect the trial of the decision or ruling by the people's court, unless it clearly violates the principle of fairness.

Watch this space

The current version of the draft is published for public opinions and further improvements and amendments will be made. Based on previous experiences, we expect the draft will be substantially improved after listening to and accepting the suggestions of all stakeholders.

The MARQUES China Team will continue to report on developments as they happen.

The authors are Ling Zhao, Shufang Zhang, Xiaoping Wei, Qin Li and Lei Fu, who are trade mark attorneys with CCPIT Patent and Trade mark Law Office. Ling Zhao is a member of the MARQUES China Team

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