We specialise in trademark refusal services for both national and international registration (“IR”) designating into China.

Brief Overview of Trademark Refusal in China

The procedure for examination of an application for trademark registration in China includes :

• Formality check including Classification of goods and services; and
• Substantive examination including the absolute grounds and relative grounds.

We provide IP services dealing with office action refusing the applied-for goods and services under an application. For instance :

• WIPO standard services descriptions are not acceptable by China National Intellectual Property Administration (CNIPA) – retail; wholesale, sales and mail ordering services;
• Class headings are not acceptable by CNIPA – we provide advice on appropriate amendments to reflect specific goods/services within that class;

We can assist you with circumventing the office action refusing the application during substantive examination :

Absolute grounds of refusal

a. Descriptiveness and non-distinctiveness – the trademark is a generic names describing or has a direct reference to the quality, main raw material of the goods, devoid of any distinctive features…;
b. Deceptiveness: – the trademark may deceive the public as to its nature, quality, and geographic origins of the goods and/or services. For instance, a trademark contains a country name, national flags, misleading information or unhealthy influence element.

Relative grounds of refusal

The trademark application is refused because it is in conflict with an earlier registration, or prior filed application.

Process to overcome the refusal

Step 1 – send us a complete scan copy of the refusal by email at [ ]. There is a non-extendable deadline on each refusal, so it is important to let us know the deadline, which is 30 days from the date of notification, sample see HERE. Or you may send us the first page of refusal to confirm the deadline, sample see HERE;

Step 2 – We will provide you with a quote to advise you the ways and chances to overcome the refusal in 24 hours;

Step 3 – if you accept our quote, and upon payment, our advice on the ways forward and the chances to overcome the refusal and the related cost of each proposed course of action will follow in 24 – 48 hours;

Step 4 – upon receipt of your instructions and payment, we will proceed with the actions as instructed and send you our report upon meeting the deadline;

Step 5 – we will report you the official decision in around 6 – 9 months upon receipt of the rulings from CNIPA.

We’re here to help you in dealing with the official refusal to obtain registration of your trademark in China.
Send us your refusal and our experienced and dedicated IP team will guide you through.

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Why Us?

Our dedicated IP team can deliver a wide range of IP services from filing to post registration to secure and protect your brands in China and Hong Kong.

We have progressed from paper-based to paperless practice. We use modern legal systems to manage our clients’ matters.
Our clients are able to follow the progress and status of their matters online from a secure portal accessible through the members log in area of our website. We use cutting-edge technology to ensure clients’ privacy and the lowest carbon footprint possible.

We offer sustainable, secure, competitive services, and outstanding support provided by a team of IP professionals.
OLN IP take pride in having built strong relationships with a notable portfolio of loyal clients throughout years of hard work accompanied by a strict work ethic.

We are grateful for our people, a team of seasoned, fast and reliable multi-lingual professionals who take customer service seriously.

FAQ

What is an international trademark registration designating China

International trademark registration in China refers to the process of obtaining trademark protection in China through an international registration system. The international registration system is governed by the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol, which are international treaties administered by the World Intellectual Property Organization (WIPO).

What is the procedure to register an international trademark in China ?

Step 1 – Basic Trademark Registration: Before seeking international registration, you should first register your trademark in your home country or a member country of the Madrid Agreement or Protocol. This will serve as the basis for your international application.

Step 2 – Filing an International Application: Once you have a basic trademark registration, you can file an international application through the trademark office of your home country or the regional trademark office, such as the European Union Intellectual Property Office (EUIPO). The application should designate China as one of the countries where you seek protection.

Step 3 – Examination by WIPO: The international application is examined by WIPO to ensure it meets the necessary requirements. If accepted, the trademark is recorded in the International Register, and WIPO notifies the China National Intellectual Property Administration (CNIPA) of the application.

Step 4 – Examination by CNIPA: The CNIPA conducts its own examination of the international application within 18 months. They examine the application’s compliance with Chinese trademark laws and regulations.

Step 5 – Publication and Opposition: If the CNIPA approves the application, the proposed trademark will be published in the Trademark Gazette. During this period, third parties have the opportunity to oppose the registration if they believe it conflicts with their own rights.

Step 6 – Registration and Protection: If no opposition is filed or is unsuccessful, the CNIPA will issue a trademark registration certificate upon paid request. The trademark owner will enjoy legal protection and exclusive rights to use the trademark in China for 10 years and renewable for a further term upon paid request.

What’s the filing basis to file an application for a trademark in China?

Unlike in the U.S., use is not pre-requisite for trademark registration in China. You can file an application based on intent to use.

However, China is a “first-to-file” jurisdiction, which means that the first person or entity to file a trademark application will generally have priority over others to obtain the trademark rights in China. This system contrasts with the “first-to-use” system followed in many commonwealths, where priority is given to the first person or entity to use the mark in commerce.
Under the first-to-file system in China, it is crucial to promptly file a trademark application to protect your rights, even before you start using the mark in commerce. This is because registration provides stronger legal protection and exclusive rights to use the mark in relation to the specified goods or services.

Is there exception and considerations related to the first-to-file system in China ?

Bad Faith Applications: China has taken steps to address the issue of bad faith trademark filings. According to the Chinese Trademark Law, if someone files a trademark application in bad faith with the intention to pre-emptively register a well-known mark or to infringe upon the rights of others, the application can be rejected or invalidated. The concept of bad faith is assessed based on various factors such as the knowledge of the applicant about the pre-existing mark and the applicant’s intention to unfairly exploit or block the legitimate rights of others.

Well-Known Trademarks: Well-known trademarks enjoy a higher level of protection in China. If your trademark is recognized as a well-known mark in China, you may be able to oppose or invalidate the registration of a conflicting mark, regardless of the filing date. But the threshold to establish well-known mark is very high.

What are the requirements for a basic trademark registration in China?

To obtain a basic trademark registration in China, you need to fulfil certain requirements. Here are the key requirements for a trademark registration in China:

Distinctiveness: The trademark must be distinctive and capable of distinguishing your goods or services from others in the marketplace. Descriptive or generic terms that describe the characteristics, quality, or function of the goods or services may face challenges during registration.

Availability: The trademark should not conflict with existing registered or well-known trademarks in China.
Non-prohibited Content: The trademark should not contain any content that is prohibited by Chinese law, such as symbols or words that are politically sensitive, offensive, or against public order or morals.

What to do if I receive a refusal from the CNIPA ?

If your trademark application in China is refused, the specific steps to follow will depend on the type of refusal and the stage of the application process. Here is a general outline of the steps you can take:

Review the refusal notice: Carefully review the official refusal notice provided by the Chinese Trademark Office (CNIPA). Understand the grounds for refusal and the specific issues raised by the examiner.

Consult with a trademark attorney: Seek advice from a qualified trademark attorney or IP specialist experienced in Chinese trademark law. We can help you assess the refusal, understand your options, and develop a strategy to address the issues raised.

Respond to the refusal: Prepare a response to the refusal notice within the specified timeframe (usually 30 days). Your response should address the grounds for refusal and provide arguments, evidence, or amendments to overcome the examiner’s objections.

Provide arguments and evidence: Present strong arguments supported by legal analysis and evidence to counter the examiner’s concerns. This may involve demonstrating distinctiveness, non-deceptiveness, acquired distinctiveness, or other relevant factors depending on the grounds cited in the refusal. Our team of IP experts are ready to assist.

Amendments or limitations: If appropriate, consider making amendments or limitations to your trademark application to address the examiner’s objections. This can involve narrowing the goods or services covered, or making other changes to comply with the legal requirements.

Submit additional evidence: gather and submit additional evidence to support your arguments and demonstrate the registrability of your mark. This can include sales figures, market surveys, consumer testimonials, expert opinions, or other relevant documentation.

Await the examiner’s decision: After submitting your response, the examiner will review your arguments and evidence. The examiner may accept your response and approve the application, request further clarification or evidence, or maintain the refusal.

It’s important to note that the specific procedures and timelines may vary depending on the circumstances, and we are happy to navigate the process effectively.

Can I apply for a time extension to reply a refusal issued by CNIPA ?

No, a review must be filed within 30 days of the notification. After filing the review, there is 3 months to file supplemental submission in support of the review.

What to do if I miss the deadline to respond an office action ?

If you miss the deadline for responding to an office action, it’s crucial to take immediate action to rectify the situation. There are some general steps you may consider taking:

Review the situation: Examine the office action and understand the requirements and objections raised by the examiner. This will help you determine the necessary steps to address the issues.

Seek professional advice: we can provide guidance based on your specific situation and assist you in navigating the necessary steps.

What’s China Classification of Goods and Services ?

In China, the classification of goods and services in general follows the Nice Classification system, which is an international classification system used by many countries worldwide. The Nice Classification system categorizes goods and services into 45 different classes. However, in China, each class has different sub-classes. For instance in Class 25, the heading “clothing, footwear, headgear” does not cover all goods under Class 25. It may only cover sub-classes

• 2501-05 (clothing);
• 2507 (shoes); and
• 2508 (headgear).

And the following sub-classes do not cover :

• 2509 (socks);
• 2510 (gloves);
• 2511 (ties, scarfs); and
• 2512 (belts).

This means that a third party can still register the same trademark on those uncovered subclasses, because goods in those subclasses are considered dissimilar to “clothing, footwear, headgear”.

This is substantially different in many countries where the similarity of goods/services is typically assessed in a more flexible manner.

Can I cover the whole class by choosing a class heading as a trademark specification?

Some Class headings (or subclass headings) are often not acceptable and usually have to be amended to reflect specific goods/services within that class.

Even if a class heading is accepted for trademark specification, only the items specifically itemized in the text heading itself are covered. That said, different examiner may classify the goods in different sub-classes. It is important to accurately identify and select the appropriate class or classes relevant to your goods or services. This ensures that your trademark is properly protected within the specific scope of your business activities.

Why do international registrations extended to China usually have a narrower protection scope?

This is because China adopts subclass system. The specification for international registrations might provide enough protection in some countries e.g. the U.S., or Commonwealth countries, but not in China because many subclasses are not provided in the WIPO’s classification systems.

Can I limit or narrow the scope of goods/services to overcome cited marks in the event of trademark refusal?

Under China’s subclass system, if the goods/services fall in the same subclass, it is deemed similar to other goods/services in that subclass.

For example, “nutrition supplements” and “nutrition supplements, namely, non-alcoholic beverages containing ingredients to prevent dental disease and cavities” are classification in the same subclass 0501. Therefore, restriction of the goods would not help with overcoming the citation.

What are the ways to overcome the absolute grounds of refusal ?

If your trademark application in China has been refused based on absolute grounds, there are several strategies you can employ to overcome the refusal. Here are some ways to address the absolute grounds of refusal:

Acquired Distinctiveness: If your mark lacks inherent distinctiveness, you can provide evidence of acquired distinctiveness or secondary meaning. This evidence demonstrates that your mark has obtained distinctiveness through extensive use and promotion, and consumers associate it with your goods or services. Supporting evidence may include sales figures, advertising materials, market surveys, and consumer testimonials, but the threshold is very high.

Disclaimers: If your mark contains descriptive or non-distinctive elements, you can consider disclaiming those elements that are not distinctive and seeking registration for the distinctive portion of the mark. By disclaiming the descriptive elements, you acknowledge that you do not claim exclusive rights to those components.

Amendments or Limitations: limiting the goods or services covered, or making other changes to comply with the legal requirements. However, amendments to the trademark are not possible once the application is filed. But of course, you may abandon the application and file an amended mark.

Arguments and Evidence: Prepare strong arguments and submit additional evidence to demonstrate why your mark should be registered despite the absolute grounds of refusal. This can include legal arguments highlighting the distinctiveness, non-deceptiveness, or public acceptance of the mark, as well as evidence showing the mark’s recognition or reputation in the relevant industry.

What are the ways to overcome relative grounds of refusal ?

To overcome relative grounds of refusal for a trademark application in China, which typically involve conflicts with existing trademarks or prior rights, you can consider the following strategies:

Coexistence Agreement: Reach a coexistence agreement with the owner of the conflicting trademark. This agreement outlines the conditions under which both marks can peacefully coexist in the market without causing confusion or misleading consumers.

The agreement should clearly define the scope of use, territories, and other relevant factors. Submitting a coexistence agreement as evidence can help demonstrate that the coexistence of the marks will not cause confusion among consumers.

Consent Letter: Obtain a consent letter from the owner of the conflicting trademark, stating their consent to your trademark registration. The letter should specify that the owner does not consider your mark to be infringing upon their rights and does not object to your registration. A consent letter can be persuasive evidence to show that there is no likelihood of confusion or infringement. The consent letter must be legalised to meet the formalities of the CNIPA.

Limitation or Amendment: Consider amending or limiting your trademark application to address the conflict with the prior rights. This can involve limiting the goods or services covered, or making other changes to eliminate the conflict.

Arguments and Evidence: Prepare strong arguments and provide evidence to demonstrate that there is no likelihood of confusion between your mark and the conflicting mark. This can include:

Distinctiveness and dissimilarity: Highlight the distinctive elements of your mark and emphasize the dissimilarities between your mark and the conflicting mark. Show that the overall impression created by the marks is different, and consumers are unlikely to be confused.

Market coexistence: Provide evidence of other registered trademarks that coexist in the market despite similarities. Show that similar or even identical marks are used for different goods or services, or that there are other coexisting marks that have a different reputation or distinctiveness.

Evidence of prior use: If you have prior use of the mark in question, gather evidence to establish your prior rights. This can include documents such as invoices, sales records, promotional materials, or other evidence that demonstrates your earlier use of the mark in commerce.

How can those cited marks all look similar co-exist but my application is rejected?

The examination process for trademark applications involves a comprehensive assessment of various factors, including the similarity of the marks, the goods or services they cover, and the potential for confusion among consumers. Here are some reasons why previously registered similar marks may coexist while your application is rejected:

Different subclass: In general, those cited marks co-exist because their respective goods/services are categorized in different subclasses. Therefore, even the trademarks are similar, they are approved by the examiner to co-exist on the register.

A closer analysis may reveal that only one or two subclasses are actually key to the applicant, and only one or two cited marks actually block those subclasses. Therefore, the applicant may only need to overcome one or two cited marks in order to register the mark in the key subclasses. Therefore, the applicant needs to formulate a sensible strategy that focuses on dealing with a smaller number of cited marks, thereby increasing the chances of success and reducing the cost of appeal.

Different owners: Similar marks may coexist if they are owned by different entities. Each trademark application is assessed on its own merits, and the ownership of the mark plays a crucial role. Even if similar marks are registered for similar goods or services, they can coexist if they are owned by different companies or individuals.

Prior rights: The coexistence of similar marks may be the result of prior rights established by the owners. If a mark has been registered or used extensively before your application, it may have acquired certain rights that allow it to coexist with other similar marks.

Each trademark application is evaluated independently, and the decision is based on a combination of factors specific to that application. The acceptance or rejection of a trademark application depends on the particular circumstances and the evidence and arguments presented. To understand the specific reasons for the rejection of your application, we are happy to review your case and provide guidance based on the specific details of your situation.

What can I do if a prior mark is cited against my application ?

It is possible to cancel a cited mark in China removing it from the trademark register Here are the general steps involved in cancelling a cited mark:

Grounds for revocation: Identify valid grounds to revoke the cited mark. This may include demonstrating that the cited mark is confusingly similar to your prior registration, lacks distinctiveness, was registered in bad faith, or violates other legal requirements.

Gather evidence: Compile evidence to support your case for cancelling the cited mark. This may include evidence of prior use, evidence of distinctiveness or reputation associated with your mark, evidence of bad faith registration, or any other relevant evidence that strengthens your argument.

Grounds for cancellation: collate prima-facie non-use of the registration in the China commerce in the past 3 years, and file a non-use cancellation requesting removal of the registration.

Review and decision: if the revocation or cancellation decision is not in your favour, you can contest the decision by review. The CNIPA will send requesting party the evidence to review and contest and will make a decision on whether to cancel the cited mark.

Appeal or administrative review: If the CNIPA maintains the unfavourable decision, you have the option to appeal the decision to the Beijing Intellectual Property Court. The court will review the case and determine whether to uphold or overturn the TRAB’s decision.

We can assess the viability of revocation or cancelling the cited mark and help you develop a strategy.

What to do if the CNIPA maintains refusal in my review action ?

Appeals and Administrative Review: If your application is still refused after responding to the initial refusal by filing a review with CNIPA, you have the option to appeal the decision to Beijing Intellectual Property Court by judicial review.

Judicial Review: This involves initiating legal proceedings and we can develop a strategy and present your case before the court.

Our dedicated IP team can guide you through the each step with a view to achieving registration of your trademark and protecting your brands in China.

How much will it cost ?

Our fees are calculated on the basis of the amount of time it takes for us to complete the work, which may be a lot more than you anticipate.

We can cap our fee for providing you with our advice upon review of the refusal. Please send us a scan copy of the refusal by email at info@oln-ip.com and we will swiftly reply with a full quote and confirming you the deadline.

We can advise you a flat fee in each course of action and an indication of any supporting documents we may need to process a reply to the refusal.

Our quoted cost are all inclusive covering official fee and disbursements.

Can you translate the supporting documents for me?

In general, our quoted fee covers translation costs of the supporting documents into Chinese for submission to CNIPA. If not, we will let you know in advance.