What to do when your trademark is rejected in China?
What is a rejection?
Trademark rejection is an Office action made by CTMO according to China Trademark Law to refuse the registration of a trademark. If any dissatisfication with the reasons and the legal basis for rejection of the Trademark Office of SAIC grows from the applicant, he/she can apply to the Trademark Review and Adjudication Board for review of the original case.
1. Others registered first.
Before a trademark examination, the trademark database is first searched. If an identical trademark is found to be registered by more than one person on the same or similar products, the application of the enterprise or individual afterwards will be rejected based on the “first apply principle”.
2. Approximate trademarks
The two trademarks are similar in word shape, pronunciation, meaning, picture composition and color, overall structure, stereoscopic shape and color combination, and are easy to make the public misrecognized or confused. Generally, it will be dismissed as an approximate trademark.
3. The trademark name is a generic name and has descriptive words.
The names that are common in the industry and the words that describe only the product characteristics cannot be registered as trademarks.
4. The lack of distinctive features of trademarks
When the trademark applied for is too simple, such as the use of simple lines and ordinary geometric figures, the examiner would consider the trademark to be lacking in distinctive features and make a decision of rejection.
5. The use of a sign that is not allowed to be registered
According to China Trademark Law, trademarks, including the name, national flag, and national anthem of the People’s Republic of China, and including the geographical names and the names or signs that make it easy for the public to misidentify the quality of the goods or the place of production are all not allowed to be registered.
About review of refusal
According to Article 34 of China Trademark Law, the Trademark Office shall notify the applicant of the disapproval of the application and non-announcement of the trademark. If the applicant is dissatisfied with the decision, he/she may apply to the Trademark Review and Adjudication Board for a review within 15 days from the date of receipt of the notification.
The grounds for the review to the refusal could be as follows:
1. The applied trademark is not identical with or confusingly similar to the prior registered trademarks.
The most common reason for refusal is that the applied trademark is identical or confusingly similar to the trademark that was earlier registered or filed by another person.
2. Used first
If an application for registration of the same trademark is filed by more than one person on the same or similar product, the examiner will dismiss the enterprise or individual who applied afterwards according to the “first apply principle”. However, if the the application date is the same, then the trademark used earlier will be announced.
In addition, in order to prevent malicious rush registration, according to Article 32 of China Trademark Law, the application for registration of a trademark shall not damage the existing prior rights of others, and the applicant shall not preemptively register the trademarks that others have used and have an impact.
In other words, if the application date of a trademark rejected as “other person registered earlier” is the same with that of the trademark being announced, or if you suspect that your trademark has been preemptively registered, you may apply to the Trademark Review and Adjudication Board for the earlier use of the trademark.
3. The trademark is distinctive and easy to identify.
When an examiner rejects a trademark registration application due to a lack of distinctive features of the trademark, the applicant may request for review by verifying that the applied trademark is distinctive. The distinctiveness of a trademark is not absolute, and it depends to a great extent on its use.
In practice, trademarks, that have no distinctive features originally and can be identified by customers the source of goods and services after use, can be registered and protected for its distinctive features.
4. No use of a sign that can not be used as a trademark
The signs that are not allowed to be used as trademarks are stipulated in Article 10, Article 11, Article 12 of China Trademark Law, but there are circumstances in which the examiners make inaccurate judgement in determing some of the terms.
For example, Article 10 Item 7 which says “deceptive, easy for the public to misrecognize the quality or the origin of the products”, and Article 11 Item 1 which says “only the generic name, graphics, and model of this productis” are both easy to cause disputes.