Weekly China Trademark News Updates
May 18, 2023
China Trademark Filing Strategies – Rejection Appeals and Backup Filings
China’s trademark prosecution timelines and its ever-growing trademark database have brought genuine concerns to brand owners when considering filing new applications. While the China National Intellectual Property Administration has been continuously accelerating new trademark application examination process, expedited examination creates an obvious downside of increase in rejections that often requires applicants to remove citations (such as non-use cancellation or invalidation). How to keep trademark applications alive while dealing with citations will be the main focus in this short article.
Below are some of trademark timelines, which may vary on a case-by-case basis and only serves as a reference for brand owners’ filing strategies.
|Notices of rejection or approval
|3 to 5 months from application filing date
|Rejection appeal decision
|6 to 8 months from filing date
|Non-use cancellation decision
|7 to 10 months from filing date
|Non-use cancellation appeal decision
|7 to 12 months from filing date
|10 to 12 months from filing date
|11 to 13 months from filing date
When a new filing is rejected based on one or more prior marks, there are generally two options to consider. Each of the two options has its own advantages, risks, and disadvantages.
Option 1 – Keep the original filing alive by exhausting all appeal proceedings until all citations are removed
- File rejection appeal to keep the application alive. Meanwhile, file non-use cancellations, invalidations or other actions against the citations.
- If rejection appeal decision is unfavorable because some citations remain valid, appeal to the Beijing IP Court (first instance court appeal), the Beijing High Court (second instance court appeal), and even re-trial court appeal.
- Note, however, after a citation is expired or invalidated, the CNIPA may wait for another year to approve later-filed identical or similar application for the purpose of avoiding confusion among consumers according to the Chinese Trademark Law.
- Earlier filing date works better in enforcements against later-filed bad faith filings or even in infringement cases.
- Trademark portfolios are easier to manage.
- Risks and Disadvantages
- Formality documents for court appeals require notarization and legalization, which may take longer than expected and lead to failure to docket the appeal.
- Attorney fees and other related fees for court appeals are significantly higher than filing backup applications.
Option 2 – Keep filing backup applications until all citations are removed
- File rejection appeal to keep the first application alive. Meanwhile, refile a second application that is identical to the first mark as a backup.
- If the backup second application is rejected based on the same citation(s) found in the first application, appeal the backup second application rejection, drop the first application when and if its rejection appeal decision is unfavorable, and file a backup third application. If the backup second application rejection appeal failed, repeat actions 1 and 2.
- If the backup second application is rejected based on additional or new citations,
- and they cannot be canceled or invalidated, drop the second application and keep the first application alive by exhausting all appeal proceedings until all citations are void.
- and they can be canceled or invalidated, appeal the backup second application rejection, and consider filing a third application as a backup, unless the first application survives until all citations are removed.
- There will always be a pending backup application.
- Relatively low official fees and attorney fees, and no notarized/legalized formality documents are required.
- Risks and Disadvantages
- Though refiling when a prior application is rejected is a good timing for backup purpose, there are risks that additional citations, including those filed in between the prior application and the backup application may be cited to block the backup application. As such, court appeal proceedings stated in Option 1 may be necessary.
- Trademark portfolios would be more complicated to manage.