Matters for Attention in Trademark Refusal Review in China

It is reported that the British Lotus who will adopt “路特斯”, the transliteration of Lotus in Chinese, as its local brand in China due to a Chinese domestic company first registered the trademark of “Youth Lotus”. It’s also mentioned in the report that British lotus lost the trademark though it should have the chance to get it through the trademark refusal review. Today, Bridge IP Law Commentary will introduce you the system of review on the trademark refusal in China.

As regulated in the Article 32 of China trademark law:

Where the application for registration of a trademark is refused and no publication   of the trademark is made, the Trademark Office shall notify the applicant of the same in writing; where the applicant is dissatisfied, he may, within fifteen days from receipt of the notice, file an application with the Trademark Review and Adjudication Board for a review. The Trademark Review and Adjudication Board shall make a decision and notify ‘the applicant in writing.

This is the so-called the system of the review on the trademark refusal, and the following  is our interpretation on its function and methods:

I. The function of the trademark refusal review

According to China Trademark Law, the determination of the trademark right depends on the authorization of China Trademark Bureau. That means any unregistered trademark could not enjoy the trademark right, excluding the well-known trademark.

Although the Trademark Bureau has strict review procedures and standards, the single examination may fail to strictly conform to the law for it being conducted by various reviewer. Therefore, China Trademark Law sets the procedure of trademark refusal review for the chance of administrative relief to the applicant, under which the application could be reviewed and decided of authorization with the Trademark Review and Adjudication Board, a more professional and objective committee.

II. The procedure of the trademark refusal review

According to the law, the trademark refusal review shall be filed within 15 days after the notice of refusal. British Lotus could have missed the deadline, and that could also get the notice of the applicant. The notice of refusal is divided into two kinds, namely the notice of part refusal and the notice of refusal. The trademark registration shall be applied to the specific classes, which also include the semi-class second to the class, and the application may be refused only in some semi-classes. When the refused semi-classes are not the key classes for registration, it’s suggested to abandon the review, and the rest semi-classes could be approved. Otherwise, when filing the review, all the applied classes will be approved after the review.

Meanwhile, according to trademark law, the applicant can also provide complementary evidence within 3 months after filing the application if noted. We recommend all review applicants make such note for it on one hand could, and on the other hand it could spare time for other procedures (more details as below).

III The legal basis of Trademark refusal review

In practice, the application of trademark may be refused by the reasons below, and the following is our analysis on the possible review reasons and the way to combine Chinese law with the evidence:

(I)Being identical or similar to the first registered trademark

This could be the most common reason for rejection, the applicant can apply review from the following aspects:

1. to judge if it’s identical or similar

According to China Trademark Law, the only determination standard in being identical is the possible confusion with the first registered trademark, which shall be considered in many aspects including text, sound, pattern, etc. Bridge IP Law Commentary usually retrieve for any identical or similar registration in the same class, such as the mark being different in single letter or word.

2. the trademark reference (the identical or similar prior registered trademark)

Trademark is not absolutely stable after approval. The trademark may be cancelled for the following situations:

(1) where the trademark is ceased for continuous three years;

(2)where the trademark is not renewed after the period of 10 years;

(3) where malicious squatting, such as copying, imitating, translating other well-known trademarks; where the agent or representative squats the principal’s trademark; where squatting other’s first used trademark which has certain influence.

(II) The reference trademark with elements of registration regusal

It is generally very difficult to win the review when refused by this reason, for the elements of registration refusal are the objective condition for review, which involve the generic vocabulary and place. Therefore, the refusal could hardly be overturned when the application is rejected for such reasons.

The enterprise usually begins to use the trademark after the application, and that may lead to the dilemma once the application is refused. Therefore, Bridge IP Law Commentary recommends to entrust the professional agency to file the review on such refusals, and that may bring the accompany a great chance to obtain the trademark.

Author: Mr. Luo Yanjie
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.