Important concerns of new Implementing Regulations for the PRC Trademark Law

Written By: Cherry (Qiaoye) ZhangParalegals

 

Since 1st May 2014, the new PRC Trademark Law officially started to implement. The new Implementing Regulations of the PRC Trademark Law (Implementing Regulations) released by the State Council Legislative Affairs Office on 30th April 2014 started to implement on the same day. Implementing Regulations gave clear guidance on few important issues, such as review period, registration application segmentation, International registration application and trademark agency.

 

  1. Period of adminicular evidence

 

The period of submitting the supplementary evidence in the proceedings of dismissing the review, opposition and invalidation will not be counted in the period of review or trail. Therefore, the prediction of the above proceedings’ period will need to consider the time of adding the adminicular evidence. Take the opposition application for example; the period of review is about 6 months for each party to adding adminicular evidence and 12 months for the Trademark Office to review, therefore, the opposition application will take around 18 months from submitting the application to issuing the rulings.

 

  1. The segmentation of registration application

 

Implementing Regulations Article 22 allow segmentation of registration application has been preliminary approved when registration is denied on certain of the designated goods.

 

However, besides the situation of partial deny, the other situations can segment application or not was not mentioned in the Implementing Regulations. So it could be considered as that the applicants will not be able to segment the application under the other situations. For example, when the applicants want to transfer, they can only transfer all categories of one application to the same assignee. Therefore, the flexibility of one trademark with many categorises application will be relatively poor. The applicants will need to consider this matter when they submit the application.

 

  1. Transfer application

 

According to Implementing Regulations Article 31, the application for transfer will need both parties to jointly submit, thus in principle proxy statements will be required when authorising agents to make the transfer application.

 

  1. Trademark international registration extending to Chinese territory

 

Implementing Regulations Article 22 regarding the segmentation application and Article 31 regarding the jointly transfer application are not applicable to international registration extension application.

 

  1. Application conditions of sound trademark

 

This modification of Trademark Law added the application of sound trademark. The Implementing Regulations Article 13 stipulated the conditions of the sound trademark application. Applying for the sound trademark registration should meet the following requirements:

1)      Declaring in the application;

2)      Submitting the satisfactory sound sample;

3)      Describing the sound trademark applying for registration and explaining the use of the trademark.  The description of the sound trademark should use the stave or numbered musical notation and literal introduction.

 

  1. Oral hearing

 

Implementing Regulations Article 60 added the provision about the oral hearing.  The Trademark Review and Adjudication Board could decide to apply oral hearing according to the request of the parties or the actual need. Therefore, the parties could request for the oral hearing according to this provision, which gives the opportunity of communication for the parties and The Trademark Review and Adjudication Board and is more conducive for the censor to get information about the case and to make the right decision.