Chapter 5: Examination Responses and Rejection Strategies

5.1 Types of Examination Decisions

During substantive examination, CNIPA may issue the following decisions: (1) Preliminary approval (no objections, proceeds to publication); (2) Office Action (non-final rejection requiring response); (3) Final rejection (applicant may request reexamination). The applicant has 15 days from receipt to respond to an Office Action, with a possible 15-day extension.

5.2 Common Rejection Grounds

Common absolute grounds for rejection include: lack of distinctiveness (descriptive or generic marks), deceptive marks, marks contrary to public order or morality, and marks containing prohibited symbols (such as national flags or emblems). Common relative grounds include conflict with prior registered or pending marks.

5.2.1 Lack of Distinctiveness

Marks that merely describe the quality, function, intended purpose, raw materials, or other characteristics of the goods/services may be rejected for lack of distinctiveness. Strategies to overcome such rejections include: demonstrating acquired distinctiveness through extensive use, amending the application to a composite mark, or arguing that the mark has acquired secondary meaning.

5.2.2 Conflict with Prior Marks

If the examiner identifies a conflicting prior mark, the applicant may: (1) Argue that the marks or goods/services are not similar; (2) Submit a consent letter or coexistence agreement from the prior rights holder; (3) File a non-use cancellation against the prior mark if it has not been used for 3 consecutive years; (4) Amend the application to avoid the conflict.

5.3 Response Strategies

Effective response strategies include: (1) Comprehensive legal arguments addressing each rejection ground; (2) Evidence of use and recognition (sales figures, advertising expenditure, media coverage); (3) Expert opinions or market surveys; (4) Amendments to the list of goods/services; (5) Divisional applications to overcome partial rejections.

5.4 Reexamination Procedure

If the applicant disagrees with the final rejection, a request for reexamination may be filed with the CNIPA Trademark Review and Adjudication Board (TRAB) within 15 days of receiving the rejection decision. The reexamination fee is CNY 750 per class. The average processing time for reexamination is approximately 5.5 months.

Even after a mark passes examination and is published, it remains vulnerable to opposition by third parties. Understanding the opposition and invalidation procedures is essential for both applicants seeking to defend their marks and rights holders seeking to block conflicting applications. Chapter 6 explores these adversarial proceedings in detail.

Chapter 6: Trademark Opposition and Invalidation Procedures

6.1 Trademark Opposition

Any person may oppose a trademark application within 3 months from the date of its preliminary approval publication. The opposition fee is CNY 500 per class. The opponent must submit a statement of opposition with supporting evidence. CNIPA examines the opposition and may render a decision to either uphold or reject the opposed application.

6.1.1 Opposition Grounds

Opposition may be based on absolute grounds (lack of distinctiveness, deceptive marks, violation of public order) or relative grounds (conflict with prior registered marks, well-known marks, copyright, or other prior rights). The opponent bears the burden of proof for relative grounds.

6.1.2 Opposition Procedure

The opposition procedure includes: (1) Filing of opposition statement by the opponent; (2) Response by the applicant (within 30 days); (3) Evidence exchange period; (4) Hearing (if requested by either party); (5) Decision by CNIPA. The average processing time for opposition cases is approximately 10 months.

6.2 Trademark Invalidation

After a trademark is registered, any person may request its invalidation on absolute grounds at any time. Invalidation on relative grounds must be requested within 5 years of registration (except for bad faith registrations of well-known marks, which are not time-barred). The invalidation fee is CNY 750 per class.

6.2.1 Absolute Grounds for Invalidation

Absolute grounds include: marks lacking distinctiveness, deceptive marks, marks harmful to socialist moral standards or having other unhealthy influences, and marks containing prohibited symbols. These grounds can be raised by any party at any time, even after the 5-year limitation period.

6.2.2 Relative Grounds for Invalidation

Relative grounds include: conflict with prior registered trademarks, well-known trademarks, trade names, copyrights, or other legitimate rights. These grounds must generally be raised within 5 years of the contested mark's registration, except for bad faith registrations of well-known marks.

6.3 Non-Use Cancellation

Any person may apply to cancel a registered trademark if the mark has not been put into use for 3 consecutive years without proper reasons. The cancellation applicant bears the initial burden of proof, after which the registrant must provide evidence of use. This procedure is commonly used to clear blocking marks.

Decisions rendered in opposition and invalidation proceedings, as well as reexamination decisions, can be further appealed to the Trademark Review and Adjudication Board (TRAB) and subsequently to the courts. Chapter 7 provides a comprehensive overview of the TRAB procedures and the appellate framework for trademark disputes in China.

Copyright (c) IPspeedy. All rights reserved. Unauthorized reproduction or commercial use is prohibited.