Brand identity is key in today’s increasingly competitive business environment, and trademarks serve a critical role in building that identity. Filing applications for trademarks in China has become increasingly important, not only due to China’s massive market potential but to curb the threat of counterfeits. However, obtaining a trademark registration in China is not always smooth sailing, the China Intellectual Property Office (CNIPA) sees a massive amount of trademark applications each year and challenges can be met due to absolute and relative grounds for refusal. This article aims to provide an introduction to the trademark application process in China, provide scenarios relating to formality examination, and outline options to help applicants navigate trademark rejections.

Overview of the Trademark Application Process

The trademark application process in China generally involves several key steps: preparing the application materials, filing the application, undergoing formality examination, substantive examination, publication for preliminary approval, and finally, registration.

Initially, the applicant must prepare the required documents, which typically include a clear representation of the trademark, the designated goods/services class(es), and the applicant’s identification details. Following submission, CNIPA will conduct a formality examination to ensure completeness and compliance with filing requirements. Once this stage is successfully passed, the application proceeds to substantive examination, during which an examiner assesses the registrability of the mark, including the presence of conflicts with prior marks and adherence to applicable trademark laws. If the application passes substantive examination, a preliminary approval is published. Absent any opposition during the three month publication period, the mark proceeds to registration and is officially announced as registered.

Formality Examination: Amendments and Non-Acceptance

During the formality examination stage, if CNIPA identifies defects or deficiencies in the application materials, a notification for amendment will be issued, requesting the applicant to rectify the identified issues within a specified period. These issues might include the clarity of the trademark representation, accuracy of applicant details, or other technical aspects. If the applicant fails to correct the deficiencies within the given timeframe, or if even after amendment the application still fails to meet the prescribed requirements, CNIPA may issue a decision of non-acceptance. Common grounds for non-acceptance include incomplete application materials, incorrect formatting, or non-compliance with relevant provisions of the Trademark Law.

Trademark Refusals: Absolute Grounds and Relative Grounds

A trademark refusal occurs at the substantive examination stage when an examiner determines that the applied-for mark does not comply with the conditions stipulated under the Trademark Law, thereby denying registration. Refusal grounds generally fall into two categories: absolute and relative grounds.

Absolute Grounds: These refer to inherent deficiencies in the mark itself. Examples include lack of distinctiveness, the incorporation of elements prohibited by law (such as national flags, national emblems, etc.), or resemblance to official symbols or marks of international organizations. Similarly, if the applied-for mark solely consists of generic names, descriptive images, or model numbers of goods/services, it may be deemed non-distinctive and be refused registration.

Relative Grounds: These focus on the relationship between the applied-for mark and earlier third-party rights. A refusal on relative grounds may arise if the applied-for trademark is identical or confusingly similar to a previously registered or previously filed trademark covering identical or similar goods/services. Furthermore, the existence of earlier rights—such as copyright or the right of an individual’s name—may also serve as a basis for refusal on relative grounds. This has become a more prominent issue considering the large number of prior marks filed in China and continuing to be filed each year.

Strategies for Overcoming Trademark Refusals

Encountering a trademark refusal does not leave applicants without recourse. The following strategies can help effectively address and overcome such challenges:

Careful Analysis of the Refusal Notification: Begin by thoroughly reviewing the refusal notice to identify the specific grounds and issues raised by CNIPA. Working with an experienced firm in China can help provide context to any refusal.

Targeted Amendments or Submission of Rebuttal Evidence: Responding directly to the cited grounds for refusal may involve modifying the trademark representation, narrowing the scope of goods/services, or submitting evidence to prove the mark’s distinctiveness. In cases of alleged similarity, the applicant may provide evidence to demonstrate that the applied-for mark is not confusingly similar to the cited prior mark.

Requesting Review or Initiating Administrative Litigation: If the applicant believes the refusal decision is unwarranted, they may file a Review of Refusal or initiate administrative litigation before the competent People’s Court to safeguard their interests.

Taking Action Against Cited Marks: If an applicant faces rejection due to prior marks, they may need to look at taking action to remove any marks cited against it. Such action could take on various forms from non-use cancellation to negotiation with the cited marks owner.

Seeking Professional Legal Assistance: Given the complexity of trademark laws and procedures, applicants are advised to seek assistance from experienced trademark attorneys or IP firms based in China to enhance the likelihood of securing successful registration and effectively responding to refusals.

Conclusion

Encountering a trademark refusal in China during the application process need not be daunting. By understanding the overall application procedure, gaining familiarity with formality and substantive examination requirements, recognizing the specific grounds for refusal, and deploying informed strategies, applicants can more effectively navigate these challenges and protect their valuable brand rights in the Chinese market.