Rick TAN
On July 29, 2024, the State Council Information Office held a press conference as part of its "Promoting High-Quality Development" series. Shen Changyu, Director of the China National Intellectual Property Administration (CNIPA), reported that the average examination period for trademark applications in China is now a stable four months.
This aligns with our experience - The time for issuing preliminary approvals or provisional refusals in most trademark applications has been noticeably reduced from 6-12 months to under six months.
Challenges and Possible Solutions
The trademark examination process has become significantly faster, which is advantageous for straightforward cases. However, because it’s generally shorter than procedures like non-use cancellations, oppositions, or invalidation requests—which can take nine months or longer—it can present challenges when these procedures are used to address potential prior rights while filing new applications. As a result, even if an applicant takes early countermeasures to address likely obstacles, the Trademark Office may still issue a provisional refusal for the new application, as these countermeasures often take more time to resolve than the examination process allows.
In 2023, the Trademark Office introduced the "Regulations on Suspension of Examination Cases." These regulations allow for the suspension of refusal reviews when cited trademarks are unstable, such as during non-use cancellation, invalidation, or opposition proceedings. This is intended to balance fairness and conserve administrative resources. In these cases, applicants must still submit a full review of the refusal - request suspension, and argue against the similarities if necessary, which incurs costs.
This raises a question: Could similar suspension measures be applied before the initial trademark examination stage, similar to the deferred examination request available for patents?
Practical Insights
We have explored this approach in several cases.
Case 1 and 2:
Date
March 13, 2023
Event Description
1. Filed trademark applications in Classes 30 and 35 and requested cancellation of two identical prior trademarks.
2. Requested suspension of examination.
Date
December 20, 2023
Event Description
The two prior trademarks were canceled.
Date
January 2024
Event Description
Received preliminary approvals for the trademark applications.
Case 3 and 4:
Date
July 6, 2023
Event Description
1. Filed new trademark applications in Classes 9 and 35 and opposed two prior trademarks with identical text content.
2. Requested suspension of examination.
Date
January 12, 2024
Event Description
The oppositions against two prior trademarks were ruled unfavorably.
Date
February 7, 2024
Event Description
The Trademark Office issued a provisional refusal for the Class 35 trademark application.
Date
ebruary 8, 2024
Event Description
The Trademark Office issued a provisional refusal for the Class 9 trademark application.
Other Cases:
We have used similar strategies for trademark applications on October 7, 2023, December 1, 2023, and March 12, 2024, requesting examination suspensions. Although decisions are still pending, it seems that the Trademark Office is considering our suspension requests.
Preliminary Conclusion
Although there are no explicit regulations for deferred examination in trademark practice, our experience indicates that the Trademark Office may still consider such requests, provided that all potential obstacles have been addressed with appropriate and justifiable countermeasures
Suggestions
“Deferred examination” requests can be beneficial for trademark applicants, and we recommend considering this option if you prefer a more proactive approach to managing your trademark application: always conduct pre-filing searches, particularly for identical marks, before you file. If these searches uncover significant obstacles and you’ve already taken steps to address them, exploring a deferred examination request might be worthwhile.
That said, since procedures can vary depending on the specifics of the case and the deferred examination approach is not yet an established practice with some uncertainty in how the Trademark Office may react, it’s advisable to consult with a local trademark professional to determine the most effective and up-to-date strategy for your situation.
I hope you find this information helpful. Please don't hesitate to contact me or your usual contact at Jiaquan IP Law if you have any further questions.