A revision of the Chinese trademark law allows submissions of arguments and amendments by the applicant during examination process
On May 01 2015 a revision of the Chinese trademark law was implemented. A revision of the examination process (Article 29) introduces a system that puts more emphasis on the opinion of the applicant. The revised article says: ” In the process of examination, where the Trademark Office considers the content of trademark registration application shall be explained or amended, it can demand applicant to explain or amend.” For example the application is rejected because a part of the designated goods are similar to a prior mark. The examiner suggests deletion of the similar goods. If the goods are amended according to the opinion of the examiner, there is a chance that the application will be registered for the goods that were not considered as similar. The system is similar to the office action system used in many countries. However whether an office action is issued or whether the application will be rejected immediately is up to the examiner.
Before the revision if a trademark did not fulfill the requirements it was rejected and the only option was to request appeal at the Trademark Review and Adjudication Board (TRAB), therefore we consider this part of the revision as ground-breaking.
In Japan if the examiner finds grounds for rejection of a trademark application an office action is issued and the applicant has the opportunity to submit an amendment and their arguments within 3 months (for foreign applicants). If an office action is received in Korea the applicant has the chance to submit an amendment and their arguments within 2 months. This deadline can be extended twice for one month each.
A revision of the Chinese trademark sets a limit for the examination process of trademarks
The law revision for the first time sets a limit for examination of trademark applications and trial cases. We can expect a time reduction of the examination and trial process. In detail, the limit for the examination process is 9 months. For oppositions and invalidation the limit is 12 months and for a review of an invalidation decision of the Chinese trademark office the limit is 9 months. Under certain circumstances the limits can be extended by 3 or 6 months. After an application was finally rejected the deadline for requesting appeal at the TRAB is still 15 days. Therefore it is required to decide immediately if appeal will be requested. If appeal is requested a detailed argumentation is required. Written arguments can be supplemented until 3 months from the day appeal was requested.
In Japan appeal can be requested within 3 months from the date of dispatch of the final rejection. In Korea it is possible to request appeal at the patent tribunal within 30 days from the date of dispatch (can be extended for 2 months).