Revised Standards for Trademark Examination and Trial

On November 22, 2021, the China National Intellectual Property Administration (CNIPA) has published a revised Standards for Trademark Examination and Trial (the Standards). This updated version will come into force on January 1, 2022, and the earlier Standards for Trademark Examination and Trial (the earlier Standards) will be repealed then. The updated Standards aims to assure the consistent application of Laws and consistent implementation of Standards in all stages of trademark examinations and trials.  

Like the earlier version, the Standards are divided into two sections but with a clearer structure than the earlier version. The first section is on procedural and formality examination standards. The second section is on the factors for determining the registrability of a trademark, such as the comparation of similarity between an applied trademark and prior trademarks. Below we are going to introduce you to some major changes in the Revised Standards.

First, the Standards has clarified the requirements regarding the examination of procedural and formality. For example, the Standards has included the formality examination criteria for words and device trademarks. The earlier Standards only include the formality examination standards for 3D trademarks, colour trademarks, sound trademarks, while relevant standards for words and device trademarks could be found separately on the clarification page form of trademark application and the Regulation on the Implementation of the Trademark Law etc. After the revise of the Standards, all formality examination criteria are codified in one document.

Second, the Standards has made several clarifications based on the latest achievements of trademark protection. For example, the Standards stipulates the examination standards of bad faith trademarks applications without the purpose of using. The CNIPA has specified that the basic information of the trademark applicant, the overall application situation of the applicants, the component of the trademarks, and the behaviour of the applicants, the evidence submitted by the interested party and others should be considered when determining if the trademark applicant has the purpose of using the trademark. Thus, trademark applicants and practitioners can have clear standards to use when combating bad faith applications and protecting their trademarks.

Third, the Standards have cited many typical cases in detail which are very handy to be used in trademark cases. Those typical cases include the information of the disputed trademark and key points considered by the examiners during the examination, such as a summary of submitted evidence, the designated goods and/or service of the disputed trademark, etc. Trademark attorneys and trademark owners would find these cases very useful because the typical cases can be used use as a reference in similar cases.

In sum, the major revision of the Standards is about the consistent implementation of Laws and standards, which should have a positive impact in future practices.