Common Misunderstandings Of Foreign Applicants In The Procedure Of Trademark Confirmation In China

Since China's accession to the WTO in 2001, a large number of foreign brands have been rushing into China. As China's trademark protection system follows the principle of registration first, foreign brands have a natural threshold when entering the Chinese market: their brands must be protected by trademark registration in China.

However, due to the differences in trademark system and cultural differences between China and foreign countries, there are always some misunderstandings in the process of trademark confirmation in foreign applicants. If they are not noticed, it is easy for them to fall into a passive situation.

Preference is given to the common name and functional characteristics of the industry as a constituent element of the trademark. Since these trademarks have been registered in their country or even been used for a long time, they have gained a certain reputation. When entering China, applicants often refuse to make changes to the elements of the commercial standard easily.

Therefore, after the registration application was submitted, it was inevitably rejected by the Trademark Office of China.

With regard to the requirements for the significance of registered trademarks, the eleventh article of the trademark law clearly stipulates that foreign applicants should ask trademark agents to examine the significance of trademarks before submitting their trademark registration in China. If a registered trademark is found to be lacking in significance, the following measures should be taken: first, make appropriate amendments to the trade marks, such as making special designs, abbreviations, and replacing some letters to the initials of the English language.

Second, if the trademark has been widely used in China, attention should be paid to retaining relevant usage evidence, and the evidence should be submitted in the subsequent dismissal of the review procedure to show that the trademark has been used in a large number of cases to be significant.

Error two actually contains two questions:

First, the problem of irregular commodities, that is, the goods or services selected by the applicant when submitting a trademark registration application are not listed in the list of similar commodities and services, which may lead to multiple adverse consequences.

1, the application for registration cannot be submitted electronically, resulting in the extension of the time required for submission.

2, after the registration application is submitted, it usually receives the notice of correction of the Trademark Office, and is asked to modify the description of the commodity. Even if it is accepted at the fastest speed as required, it will take more than two months.

3, if you do not modify the name of the commodity after receiving the amendment notice of the Trademark Office, you will probably receive a notice of no acceptance by the trademark office.

Therefore, the use of non-standard goods or service names can be said to be harmful and unnecessary. It is suggested that foreign applicants should ask Chinese agents to plate synonymous or synonymous or synonymous or convert to non-standard commodities before applying for trademark registration in China, and try not to exceed the scope of similar commodity and service differentiation tables.

If the situation is special, it is impossible to find a similar commodity or service name in the differentiation table, and make a reasonable explanation in the correction procedure, so as not to encounter the embarrassment of inadmissibility.

Secondly, the problem of too narrow commodity range.

In some countries that pursue the principle of prior use, the commodities designated by registered trademarks are not allowed to be retained if they are not actually put into use.

Therefore, many foreign trademark holders will only specify one or two items in their country's registration application, or even use restricted words to further restrict the actual use area of the goods.

Such a commodity description is copied to China's trademark if it is intact.

On the one hand, it is easy to appear the problem of irregular commodities mentioned above. On the other hand, there will be too narrow coverage.

In practice, trademark registration applications that only specify one or two commodities are less likely to appear in conflict with trademark registration, and easier to register. However, after trademark registration has been registered, especially after the trademark has gained a certain reputation and influence in the Chinese market, all kinds of snatch will be followed up. The foreign party has to spend a lot of time, energy and money to clean up these malicious registered trademarks.

The author believes that China pursues a trademark registration system with a prior registration principle. When applying for trademark registration, a foreign trademark applicant should not only be confined to its own registered commodity item, but should focus on the long term. The list of goods and services specified should cover all the business scope and related categories of goods and services that may be undertaken in the future, so as not to have an opportunity for others.

Generally speaking, a well-known brand is also more likely to encounter a rush. Therefore, some large companies are very keen on monitoring the initial notice of similar trademarks with their own core brands, and actively prevent trademark registration by trademark objection procedures, so as to maintain the value of their brands without outflow.

Trademark monitoring is understandable, but some foreign applicants like to feedback their monitoring results to Chinese agents to consult with them about the feasibility of objection.

Because of cultural differences, it may not be similar to the two trademarks in Chinese eyes, but foreigners think they are highly approximate.

Foreigners (including applicants and agents) have no concept of Pinyin. According to Chinese reading habits, the Pinyin part should be regarded as the annotation of the Chinese part, and the core recognition part should be Chinese.

In particular, it is worth mentioning that there are many homophones in Chinese. The above table is an example. According to the Chinese judgment standard, if someone else applies for the registration of "+KALANXI" in the same commodity, it will not be considered to be similar to the "+KALANXI", even though the Pinyin parts of the two are exactly the same.

As for the solution to the above mistakes, the author's suggestion is that the foreign party should fully listen to the opinions of the Chinese agents for the monitoring results containing both Chinese and English (Pinyin). If it is indeed Pinyin and the Chinese agent considers that the two are not approximate, the foreign party can rest assured of the opinions of the Chinese agents and give up their objections.

Although China adheres to the principle of first registration, it may be necessary to provide corresponding evidence to prove the use of trademarks when rejecting reexamination, objection, invalidation, and revocation of three years of no use.

In practice, the foreign party has two typical situations when providing evidence of use: one is that basically no evidence can be provided, and the adverse consequences may be obvious. This is not explained here. The other is that although substantial evidence can be provided, most of them are invalid. For example, the relevant evidence is produced outside the mainland of China, or the relevant evidence is taken from some photos in mainland China, but the photos do not show the time, place, the name of the applicant, the trademark pattern or the designated commodity.

Foreign applicants often find it difficult to understand the second cases. They believe that we have submitted so many evidences. Why is the relevant request still unsupported? In fact, the focus of using evidence is not much, but whether it is effective.

The following is an example of the use of evidence in the thirty-second half of the Trademark Law of the second half of the trademark law, [7], which has been used and has some effect.

From the verbatim understanding of clauses, it is known that "used" means that the time of production of evidence must be before the date of trademark dispute application. Although the location produced by the trademark is not expressly provided, it can be seen from the regionality of the trademark right that "arising from the mainland of China" is a hidden premise. "And has a certain influence" means that the time span and the span of the space have reached a relatively wide range, that is, the relevant evidence is produced in continuous and different years, so as to prove that the time span is longer, and the locations are distributed in different provinces and cities in China, so as to prove that the span of the space is wider.

From the above literal analysis, we can see that an effective trademark usage evidence must be able to clearly display the time, place and other important information, and at the same time, meet the specific requirements of the time and place of the law.

In addition, in order to satisfy the relevancy of evidence, the relevant evidence must also display the name of the applicant, the pattern of the trademark, and the name of the specified commodity or service.

In practice, it is rare for a single evidence to contain all of the above elements. Therefore, applicants often need to provide multiple evidences in the process of trademark usage to form a chain of mutual evidence to reach the standard of proof for the examiners or judges.

The specific forms of trademark used in designated commodities are:

(1) attaching trademarks to commodities, commodity packages, containers, labels, etc. by means of direct affixing, engraving, branding or weaving, or using them in commodity additional labels, product manuals, introduction manuals, price lists, etc.

(2) trademarks are used in paction instruments that are related to commodity sales, including the use of commodity sales contracts, invoices, bills, receipts, import and export inspection and quarantine certificates, customs declaration documents, etc.

(3) the use of trademarks in broadcasting, television and other media, or in public publications, and advertising advertisements for trademarks or trademarks using billboards, postal advertisements or other advertising methods;

(4) the use of trademarks at exhibitions and fairs, including the printed matter and other materials used in the exhibition and exposition.

(5) other forms of trademark that conform to the law.

The specific forms of trademark use in designated services are:

(1) trade marks are directly used in service places, including service brochures, service signs, shop decorations, staff costumes, posters, menus, price lists, lotteries, office stationery, stationery and other items related to designated services.

(2) trademarks are used on documents related to services, such as invoices, remittance documents, service agreements, maintenance and maintenance certificates, etc.

The (3), (4) and (5) of the evidence used in the trade mark are also applicable to the service marks.

Finally, from the point of view of the force of proof, the evidence that can be verified for third parties, such as invoices, import and export inspection and quarantine certificate, customs declaration form and media advertisement, is more powerful than that of the applicant's commodity packaging and brochure. The applicant should try to provide evidence with strong proof.

Trademark right belongs to industrial property and has regional character. The trademark system of different countries will be more or less different.

As can be seen from the above, due to the inherent differences between Chinese and foreign trademark systems, foreign brands will inevitably encounter "acclimatization" when they enter China. In fact, foreign applicants have far more misunderstandings in the procedure of trademark confirmation in China.

The principle of first registration is the system of trademark confirmation, which is relative to the principle of prior use. In China, the exclusive use of trademark will not be generated in China. Trademark registration is the only way to establish the exclusive right to use a trademark. The fourth article of the trademark law, a natural person, a legal person or other organization, needs to obtain trademark exclusive right for its goods or services in its production and operation activities. It should apply to the Trademark Office for trademark registration.

If thirty-first or two or more than two trademark registration applicants apply for registration with the same or similar trademark on the same commodity or similar commodity, they shall preliminarily approve and announce the trademark that has applied for the prior application. The application for the same day shall be preliminarily approved and announced for the use of the first trademark, and the application of the other person shall be rejected and no announcement shall be made.

If the application procedures for trademark registration are complete, and the application documents are filled out and paid in accordance with the regulations, the Trademark Office shall accept and notify the applicant in writing. If the application procedures are not complete, the application documents are not filled in or the fees are not paid according to the regulations, the Trademark Office shall not accept the application, and notify the applicant in writing and explain the reasons.

The application procedures are basically complete or the application documents are basically in conformity with the regulations. However, if a correction is needed, the Trademark Office shall notify the applicant to make corrections, and limit them to the Trademark Office within 30 days from the date of receipt of the notification.

If the amendment is returned to the Trademark Office within a specified time limit, the date of application shall be retained. If the amendment is not completed at the expiration of the period or fails to be corrected according to the requirements, the Trademark Office shall not accept it and notify the applicant in writing.