Several Provisions on Standardizing Application for Trademark Registration will be implemented with effect from 1 Dec. 2019

One of the key amendment aspects is the regulations on the honesty and integrity principle, such as the responsibilities related to the use of trademarks, curbing malicious trademark applications and trademark agencies. In order to better implement those articles, recently, SAIC releases the “Several Provisions on Standardizing Application for Trademark Registration” (the “Provisions”), we have picked out some practical articles for your reference.

1. To deal with circumstances which the application of a trademark has violated the reasons as stipulated in the “Provisions”

In the application session, the trademark registration authorities shall reject and refuse to gazette. In the preliminarily validated and gazetted session, where an objection is raised against a preliminarily validated and gazetted trademark during the gazette period on the ground that it has violated these Provisions, if the trademark registration authorities upon examination conclude that the objection is justified, it shall make a decision on non-registration. In the statutory period after the trademark has been registered, if the trademark is applied for invalidation on the ground of violation of these Provisons, if the trademark registration authorities upon examination conclude that the invalidation application is justified, the trademark registration authorities shall make a ruling to declare the registered trademark invalid;or where a trademark is found by the trademark registration authorities to be in violation of these Provisions, the trademark registration authorities shall declare the registered trademark invalid.

To be noted that all the decisions are made based on the honesty and integrity principle, and the reason in the application session shall only be a malicious application for trademark registration without intention of using it as stipulated in Article 4 of the Trademark Law.

2. To specify the factors which make be taken into consideration to determine if an application for trademark registration violates the provisions of Article 4 of the Trademark Law.

Article 8 of the “Provisions” has prescribed 6 factors: (1) the number of trademark applications, categories of commodities on which the trademarks are used, trademark transactions etc. of the applicant or a natural person, legal person or any other organization which is related to the applicant; (2) the industry and operating status of the applicant etc.; (3) the applicant was found to have committed malicious trademark registration or trademark infringement etc. in an administrative decision or ruling or in a judgment which has come into effect; (4) the trademark applying for registration is identical or similar to a well-known trademark with certain popularity of others; (5) the trademark applying for registration is identical or similar to the name of a well-known person, enterprise name, abbreviation of enterprise name or other commercial logo etc.; and (6) any other factors that trademark registration authorities believe should be considered. This article is very practice, if a party plans to raise an objection or apply for invalidation against a registered trademark, it could take those factors into consideration.

The “Provisions” has also prescribed articles on the circumstance where a registered trademark has not been used for three years consecutively without a proper reason; how to deal with the circumstance which has violated the honesty and integrity principle after the target trademark has been transferred; and the relevant punishments.