Four key issues that applicants need to pay attention to after the implementation of the new Trademark Law

Introduction to Small Standards For trademark applicants in my country, sound trademarks are a new thing. Some other regions or regions have included sounds and even smells in the scope of trademark applications, such as the lion's roar at the beginning of the film produced by MGM Films in the United States and the startup music of Nokia mobile phones.

Effective from May 1, 2014, the new Trademark Law and the Implementation Regulations of the Trademark Law will be implemented simultaneously. Compared with the old Trademark Law and its Implementing Regulations, the new law and regulations have been revised to address issues such as cumbersome trademark registration procedures and long trademark confirmation time, simplifying the trademark confirmation process and shortening the trademark registration cycle. Provide applicants with more convenience in program settings. In order to deepen the understanding of the new Trademark Law by trademark applicants and apply for registered trademarks more efficiently and conveniently, the author starts from the perspective of applicants and sorts out several key issues that need to be paid attention to when applying for trademark registration after the implementation of the new law. Hope it helps.

1. Pay attention to the constituent elements of new sound trademarks and consider registering new trademarks

According to the provisions of Article 8 of the old Trademark Law, any trademark that can be applied for registration is Visible signs that distinguish the goods of natural persons, legal persons or other organizations from those of others, including words, graphics, letters, numbers, three-dimensional signs and color combinations, as well as combinations of the above elements'. With the development of economy and society, various new trademarks emerge in endlessly. In addition to traditional trademark components such as text, graphics, letters, numbers, three-dimensional logos, and colors, new elements such as sounds, smells, and dynamics have gradually entered the public eye. The new Trademark Law responds to the demand for new trademark components due to economic development and incorporates more mature sound elements into the trademark components. The new "Trademark Law" deletes the requirement for the visibility of trademark registration elements and stipulates that "any mark that can distinguish the goods of a natural person, legal person or other organization from the goods of others, including words, graphics, letters, numbers, and three-dimensional marks" , color combinations, sounds, etc., as well as combinations of the above elements, can be applied for registration as trademarks'. The word ‘etc.’ appears in this description, indicating that in addition to the elements clearly stipulated by law, more new trademark constituent elements may also be recognized.

In response to the sound trademark elements added to the new Trademark Law, the new "Trademark Law Implementation Regulations" have specific provisions on the requirements for registration of sound trademarks. According to regulations, a sound trademark refers to a trademark consisting of a sound itself that is sufficient to distinguish the source of goods or services. It can be composed of musical sounds, such as a piece of music; it can also be composed of non-musical sounds, such as natural sounds, human or animal sounds; it can also be composed of sounds with both musical and non-musical properties. Registered sound trademarks have higher requirements for distinctive features, that is, the sound can be identified during the consumption process.

For trademark applicants in my country, sound trademarks are a new thing. Some other regions or regions have included sounds and even smells in the scope of trademark applications, such as the lion's roar at the beginning of the film produced by MGM Films in the United States, and the startup music of Nokia mobile phones.

Sound trademarks are different from traditional trademarks in that their distinctiveness needs to be established through extensive use. That is to say, the registration of a sound trademark must be submitted after the sound trademark has been widely recognized by consumers in the relevant field after extensive and long-term use, and its distinctiveness and recognizability have been confirmed in practice. Legal protection can only be obtained after passing the review. Applicants need to pay enough attention to this point and do not mistakenly think that any sound can be registered as a trademark.

In recent years, the popular saying that "the market has not moved, trademarks come first" is no longer applicable when applying for registration of sound trademarks. It should be changed to "first heard in the wild, and later in the court". If a sound trademark can be approved for registration, in a sense, it is a confirmation of the market position, popularity, and reputation of the applicant's goods (or services). In addition, the examination of sound trademarks is subject to the same examination standards as other trademarks, and there is no difference because they are new trademarks. Specifically, review of prohibited clauses, significance review, and similarity review are still indispensable links. Taking the review of banned clauses as an example, sounds with the same or similar melody as our country’s or foreign national anthems, military songs, anthems of intergovernmental international organizations, religious music or violence and terrorism, and other sounds with adverse effects will not be passed.

Taking the distinctiveness review as an example, sounds that only directly express the content, consumption objects and other characteristics of goods or services will be rejected due to lack of distinctiveness. If necessary, the Trademark Office will issue an examination opinion, and the applicant needs to cooperate with the examination of the sound trademark, provide evidence of use and explain its distinctive features.

2. Pay attention to the applicable provisions of the commodity classification table and consider electronic applications for trademark registration

The new "Trademark Law" clearly stipulates that "trademark registration applicants shall fill in the use of trademarks according to the prescribed commodity classification table" product category and product name, submit a registration application'. Compared with the old Trademark Law, the new Trademark Law has further established the important status of the commodity classification table. At the same time, in the review and approval of trademark registration, the new "Trademark Law" stipulates that 'if it is the same as or similar to another person's trademark that has been registered or preliminarily approved for the same kind of goods or similar goods, the Trademark Office will reject the application.' This is also Issues involving the use of commodity classification tables to determine identical and similar trademarks.

Some trademark applicants may be unfamiliar with the commodity classification table. They should pay attention to and understand this table after the implementation of the new Trademark Law. The full name of the commodity classification table is "Classification Table of Similar Goods and Services". On August 9, 1994, my country joined the Nice Agreement, which aims to establish a consistent international classification system for goods and services for trademark registration. It is an international convention participated by many countries. Its full name is "Goods and Services for Trademark Registration". Nice Agreement on the International Classification of Services. The classification of goods and services adopted by this Agreement in trademark registration is the ‘Nice Classification’. The Nice Classification is revised regularly. Firstly, new commodities are added according to the actual situation. Secondly, the commodities already included in the classification are adjusted according to new practical needs to make the commodities more in line with the needs of economic and social development.

The commodity classification table currently used in trademark examination in my country is the tenth edition of the Nice Classification, which has been implemented since January 1, 2012. The official name is the 'Classification Table of Similar Goods and Services (based on the Nice Classification) Tenth Edition)', and the relevant content has been slightly revised in 2013 and 2014. Therefore, trademark applicants need to note that the 'Commodity Classification Schedule' mentioned in the new Trademark Law currently refers to the 'Classification Schedule of Similar Goods and Services (Based on the 10th Edition of the Nice Classification)' (hereinafter referred to as the 10th Edition Commodity Classification Schedule ).

Since each version of the commodity classification table will be significantly adjusted according to the actual situation, in order to ensure smooth trademark registration, applicants must apply for trademark registration according to the new commodity classification table. When the author used the tenth edition of the commodity classification table for actual review, I once encountered a situation where the applicant applied for a registered trademark using the outdated seventh edition of the commodity classification table and encountered a similar trademark, resulting in the registration being rejected.

Article 22 of the new Trademark Law stipulates that “trademark registration applications and other relevant documents may be submitted in writing or in the form of data messages.” The old Trademark Law did not clearly stipulate the form in which trademark registration applications should be submitted. In actual practice, trademark registration applications and other documents were mainly submitted in written form, and applications submitted in the form of data messages were only used as a supplement to the written form. Due to previous laws not clarifying the validity of data messages and limitations in network and data processing capabilities, the Trademark Office has a certain quantity limit when accepting electronic applications. The new Trademark Law clearly stipulates that applications in written form and data message have the same effect, confirms the legal validity of application documents in data message and written form, and provides a legal basis and guarantee for the full acceptance of electronic applications.

Applying for registered trademarks through data messages is not a new thing. As early as 2009, the Trademark Office announced the "Trial Measures for Online Trademark Applications" and accepted online trademark applications. The new "Trademark Law Implementation Regulations" that are implemented in conjunction with the new "Trademark Law" clearly stipulate that "the application date for trademark registration shall be the date when the Trademark Office receives the application documents." Submitting a trademark application in writing requires the preparation of a large amount of paper materials. Submission, delivery, acceptance and other aspects require a certain amount of time and involve uncertainties. Compared with the traditional written method, the data message method has the advantages of convenience and speed. It can be submitted to the Trademark Office as soon as possible after completing the relevant data materials, and the application time can be determined directly through the computer network system. As the number of trademark applications in my country has increased significantly year after year, there are also more and more applications for identical and similar trademarks on the same day. The processing of trademark applications filed on the same day requires complicated procedures such as submitting evidence of use, negotiation, and drawing lots. It takes a lot of time and the results are uncontrollable. It is undoubtedly a torture for the relevant applicants. Therefore, it is of great significance to establish the prior rights of trademark application as early as possible.

Applying for a registered trademark by data message can save the applicant time and establish the right to apply first. The author recommends that applicants try to submit trademark registration applications by data message if conditions permit.

3. Pay attention to the trademark registration period and consider the problems that may be encountered during the review

The old Trademark Law did not clearly stipulate the trademark registration review period. Article 28 of the new Trademark Law stipulates: 'For a trademark applied for registration, the Trademark Office shall complete the review within nine months from the date of receipt of the trademark registration application documents. If it meets the relevant provisions of this Law, it shall make a preliminary review and announcement. . ’

The new Trademark Law stipulates the time limit for trademark review from a legal perspective, requiring the Trademark Office to complete the trademark registration review within the time limit without statutory reasons. This means that after the applicant submits a trademark registration application and gets it accepted, if everything goes well, he or she can get approval and get the trademark registration certificate in about a year. The time limit provisions of the new Trademark Law give applicants a clear expectation of the time required to register a trademark, and also provide a legal basis for the Trademark Office to rationally allocate trademark review resources and build a standardized and efficient trademark registration mechanism.

For trademark applicants, when seeing that the new Trademark Law clearly stipulates the review period for trademark registration, they must also understand the applicable conditions of the statutory review period, matters related to the suspension of the review period, and the application process. problems you may encounter. Since the trademark registration process involves many links and the relevant legal provisions are relatively complicated, this article will not go into details. It will only briefly explain the trademark rejection (including full rejection and partial rejection) and the issues of same-day application that may be encountered and easily raised by applicants.

Rejection of trademark registration application is a situation that applicants may encounter. In 2013, the number of trademark applications in my country exceeded 1.88 million, and it is expected that the number will exceed 2 million in 2014. The number of trademarks that are rejected every year is 100,000. Rejection involves two situations, namely full rejection and partial rejection. For rejected or partially rejected trademarks, the Trademark Office will issue a trademark rejection notice to the applicant, informing the applicant in writing of the time, reason, specific items, etc. that the trademark was rejected. According to the provisions of the new Trademark Law, if the applicant is dissatisfied with all rejections, he or she may submit a trademark rejection review application to the Trademark Review and Adjudication Board within the specified time limit. If the applicant is dissatisfied with the partial rejection, he or she can apply for division of the trademark (Editor's note: Regarding the issue of trademark division, please refer to the "Understanding and Application of One Mark for Multiple Classes and Division Procedures" published in this edition on November 20, 2014). The rejection part filed for review of the rejection. Obviously, trademarks that enter the rejection review process will take additional time to review. Article 34 of the new Trademark Law stipulates: ‘The Trademark Review and Adjudication Board shall make a decision within nine months from the date of receipt of the application and notify the applicant in writing. If there are special circumstances that require an extension, it can be extended for three months with the approval of the industrial and commercial administration department of the State Council. ’ If the applicant is still dissatisfied with the Trademark Review and Adjudication Board’s decision, he or she may file a lawsuit with the People’s Court within the specified time limit after receiving the notice of the Trademark Board’s decision.

Same-day trademark application is a situation where applicants are prone to doubts. Trademark application on the same day refers to the situation where two or more applicants apply for registration of the same or similar trademark on the same goods (services) or similar goods (services) on the same date. If the Trademark Office discovers a same-day application during review, the normal trademark registration period will be suspended and the same-day application processing procedure will be entered. Many applicants are not very familiar with this. Some applicants believe that the nine-month review time limit should still apply at this time, and therefore request that the review process be accelerated. In fact, for trademark applications filed on the same day, the Trademark Office will first require the applicant to provide evidence of actual use within the specified time (within 30 days from the date of receipt of the notification). If the evidence is invalid or the evidence cannot be provided, the Trademark Office will require each applicant to apply for trademarks on the same day to negotiate (within 30 days from the date of receiving the notice). If the negotiation fails, the Trademark Office will organize all applicants to participate in the lottery for trademark applications on the same day. , and determine the right to apply first based on the lottery results. It can be seen that compared with the normal trademark review, the processing process of same-day trademark application has added many links, and some links (such as the Trademark Office’s confirmation of the use evidence of both parties, the review of the negotiation agreement, etc.) are time-consuming and cannot be determined objectively. As a result, the processing time for same-day trademark applications greatly exceeds the nine-month period for normal trademark review.

4. Pay attention to the adjustment of the scope of opposition applicants and consider the opposition relief procedures

Article 30 of the old Trademark Law stipulates that "anyone may file an objection" to a preliminary approved trademark ; Article 33 stipulates that after the Trademark Office makes an objection ruling, if the party concerned is dissatisfied, it may apply to the Trademark Review and Adjudication Board for review. All natural persons and legal persons are included in the scope of opposition applicants. There is no limit to the scope of opposition applicants. Factors such as whether they have an interest in the trademark announced in the preliminary examination and approval, whether the reasons for opposition are grounds, etc. will not affect the filing of objections; after the opposition is decided, , both the opposition applicant and the respondent who are dissatisfied with the result have the right to file an opposition review, and the opposed trademark will enter the opposition review process and will not be announced for the time being.

The new Trademark Law makes significant changes to opposition applicants and opposition procedures. Article 33 stipulates that if the prior rights holder or interested party believes that there is a violation of relative grounds, or 'anyone believes that the provisions of Articles 10, 11, and 12 of this Law have been violated' (i.e., reasons), they may File an objection with the Trademark Office. Article 35 stipulates that after the Trademark Office makes a decision on objection, invalidity and approval of registration, it shall issue a trademark registration certificate and make an announcement. If the opponent is dissatisfied, he or she may request the Trademark Review and Adjudication Board to declare the registered trademark invalid. After the Trademark Office makes a decision that the objection is valid and will not be registered, if the opponent is dissatisfied, he or she may apply to the Trademark Review and Adjudication Board for review. The new Trademark Law divides the scope of opposition applicants based on whether they are interested parties and the type of reason for violation (reason or relative reason), and determines opposition relief and subsequent trademark registration based on the validity of the Trademark Office's opposition ruling. Programs are distinguished.

The adjustments and changes in the opposition system of the new Trademark Law are of positive significance for trademark applicants to successfully obtain trademark registration. During the implementation of the old Trademark Law, there were a large number of cases in which non-prior rights holders and non-interested parties raised objections to trademarks that had been preliminarily approved, and cases of malicious objections were also not uncommon. The new Trademark Law restricts the qualifications of opposition applicants and clearly stipulates the reasons for opposition. It also adjusts and optimizes the opposition review procedure. On the one hand, it allows applicants to register their trademarks as soon as possible and obtain protection as soon as possible to prevent the abuse of trademark opposition procedures; On the other hand, for improperly registered trademarks, even if the objection applicant can no longer file an objection review, it can still obtain relief through the invalidation procedure and even subsequent judicial procedures. The new opposition system not only protects the legitimate rights and interests of trademark applicants, but also maintains the normal registration order.

The following is a brief description of the adjustments and changes in the objection system using two cases.

◎Case 1

A natural person A has no interest in either Company D or Company E, but he believes that a certain graphic trademark preliminary approved and announced by Company D is different from a certain trademark already registered by Company E. File an objection due to similarity of graphic trademarks. As far as Company D is concerned, natural person A is neither the prior right holder nor an interested party, and the reason for the objection has nothing to do with public order and good customs or prohibition clauses. His objection to Company D's trademark is akin to a dog taking advantage of the mouse. Since the old Trademark Law has no restrictions on the identity and reasons of the opponent, natural person A can indeed file an objection to the graphic trademark initially approved and announced by Company D on the basis of relative reasons (the two trademarks are similar). However, according to the provisions of the new Trademark Law, the trademark The Bureau will not accept the objection raised by natural person A who has no interest in companies D and E and who only raises objections based on relative reasons. In this case, Company D’s preliminary trademark can be successfully approved and the registration certificate obtained. Of course, if natural person A really believes that the preliminary examination trademark has the above-mentioned problems, he can directly notify Company E, who will file an objection to the Trademark Office as an interested party.

◎Case 2

In July 2012, the Trademark Office preliminarily approved the national liquor Moutai trademark applied by China Kweichow Moutai Distillery (Group) Co., Ltd., Shanxi Xinghuacun Fen Distillery Co., Ltd. and several other companies believed that the trademark had adverse effects and filed objections with the Trademark Office and were accepted. In this case, the reason for opposition to the trademark of Chinese liquor Moutai was (adverse impact). Any unit or individual can file an objection on this ground when the new or old Trademark Law comes into force. The trademark was represented by a trademark agency in Beijing, and the Trademark Office issued a notice of objection and defense to it, requiring the agency to promptly notify Maotai Distillery to respond within the specified period. Moutai Distillery submitted opposition defense materials to the Trademark Office within the prescribed time limit. The case is still pending. According to the opposition procedures of the new Trademark Law, if the Trademark Office determines that the grounds for opposition are not valid, the national liquor Moutai trademark will be allowed to be registered and announced, and the opponent can only request the Trademark Review and Adjudication Board to declare the registered trademark invalid.

If the objection is established and Maotai Distillery is dissatisfied, it can apply to the Trademark Review and Adjudication Board for objection review in accordance with Article 35 of the new Trademark Law.