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New Policies about the Examination Procedures of Trademark Administrative Cases

Time:2016-03-24  Source:GoldenGate   Author:

On March 24, 2016, the Trademark Office of China (“CTMO”) issued some new policies about the examination procedures of trademark administrative cases, involving such aspects as evidence preparation, Office Action (“OA”), express examination procedures, etc. These measures aim to provide more efficient procedures for concerned parties. After being launched, they have aroused broad attention among and won wide positive praises by trademark owners and professionals. These measures mainly focus on:
 
I. Provide Guiding Opinion on OA Notice by the Examiner
 
The Examiner will include some explanatory or instructive contents in the notification of OA, so that applicants can have better understanding on the Examiner’s thoughts, thus make response to OA more pertinently and accurately.
 
The old practice of the CTMO gave the applicant chance to reply to OA once only, which resulted in that many applications were just rejected directly at the stage of formality examination, if the Examiner considered that the OA response did not meet their requirements. Under most situations, OA refer to “non-standard” descriptions of goods/services. To avoid such rejection, when replying to the OA, the applicants had to be very cautious and conservative in amending the specifications. Normally, trademark attorneys suggested client replacing the descriptions in question with goods/services items in the official Classification Guidance Book which was edited based on Nice Classification, in order to assure the safety of OA response. However, it happened quite often, especially for foreign applicants that, there is no “standard” items found in the Book as exactly the same as those goods/services to be covered by the new applications.  
 
This new rule is expected to reduce the embarrassing situation of previous OA practice as discussed above.
 
II. Opening Express Examination Procedure
 
In the past, express examination is not a statutory procedure. In some special cases the applicant indeed requested for speeding up the examination but such requests were rarely accepted.
 
This new rule would make great benefit for the involved parties having urgent demands in other legal proceedings which require CTMO to make a decision on related trademark cases. Although the rule does not specify what are considered as “urgent and significant reasons”, generally speaking situations like pending court cases, enforcement actions with customs involving serious infringement, should be deemed as fair reasons for express examination.
 
III. Simplifying overseas documentation, no notarization or legalization is required any longer for cases such as assignment, name change recordal etc.
 
This measure significantly reduces foreign applicants’ burden of documents preparation by notarization or legalization, which no doubt will save lots of time of foreign attorneys/ in-house counsels and shorten the examination process.
 
IV. Evidence Sharing for Cases with Similar Situation in Opposition
 
It is quite common for those right owners with large portfolio of oppositions that evidences in many opposition cases are similar or just the same. By this new rule, it would not be necessary to copy and bind the whole set evidence for each case. Oppositions with the same evidence can be shared among different cases.
 
This rule obviously saves lots of paper work preparation of the concerned parties, as well as the CTMO’s burden of file management. And of course less paper printing is good for environmental protection.
 
In brief, the above-mentioned new rules are undoubtedly good news for IP owners and professionals. These measures once again embody the strength and determination of the central government’s reform of simplifying governmental functions. We expect a good-quality and high-efficiency system of trademark administrative examination practice to come in China as soon as possible!

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