On 16 November 2021, the China National Intellectual Property Administration (CNIPA), through Announcement No 462, released the Guidelines for Trade Mark Examination and Trial (the Guidelines 2022, accessible here; for now, they are only in Chinese). As of 1 January 2022, the Guidelines 2022 have come into effect, repealing the Standards for Trade Mark Examination and Trial (an English version of the Standards 2016 provided by IPKey is accessible here).
As Announcement No. 462 states, the purpose of issuing the Guidelines 2022 was to ‘standardise the trade mark examination and trial procedures and ensure the uniform application of laws and consistent implementation of standards in all trade mark examination and trial aspects’.
Like the EUIPO’s Trade Mark and Design Guidelines and to the USPTO’s Trade Mark Manual of Examining Procedure, the Guidelines 2022 are the main point of reference for all parties using the Chinese trade mark system.
China’s first trade mark examination standards were written by the Trade Mark Office in March 1987, in response to the developments since 1978 Reform and Opening-Up. In 1986, the annual volume of trade mark applications in China exceeded 50,000, and the number of trade mark examiners increased – an official standard guidance of examination was thus considered necessary at that time by the Trade Mark Office. The Standards were subsequently revised in 1994, 1997, 2001, 2005 and 2016, summarising changes in legislation and practices.
Compared to the Standards 2016, the Guidelines 2022 have: (1) increased in length: from 194 to 422 pages; (2) been updated with cases and explanations; and (3) been adapted to the Trade Mark Law of China, 2019 Amendment (See the WIPO LEX page for its full context in both Chinese and English here).
Let us have a glance at the structure of the Standards 2016 first, as a means to better understand the Guidelines 2022:
The Guidelines 2022 below also have two parts. Part A systematically reviews and optimises the existing standards and working procedures for the formal review of the various processes; Part B provides the substantive standards for trade mark examination and adjudication:
Major additions
The two highlighted sections in the table above are particularly noteworthy.
(1) The Madrid international trade mark registration. While the Standards 2016 merely provided a limited amount of information on territorial extension, the Guidelines 2022 devote a whole chapter to it. As per the CNIPA’s supplementary interpretation, that chapter was ‘written on the basis of the Trade Mark Law of China and its implementing regulations and relevant Madrid international treaties, summarising and sorting out the relevant WIPO regulations, domestic regulations and practical experience. It includes the specific requirements and content of the entire examination of the Madrid International Registration. The descriptions of the application forms related to the international registration of Madrid trade marks in each chapter are based on the latest publications of WIPO.’
Information on the Madrid international trade mark is also scattered in other chapters, e.g. in Chapter 5, on the starting standard of the three-year registration, in Chapter 11 on trade mark assignments, in Chapter 22 on trade mark registration certificates and in Chapter 24 on trade mark notices.
(2) The bad faith application with no intention of use. The Guidelines 2022 follow Article 4 of the fourth revision of China Trade Mark Law (2019), which reads as follows: ‘A bad faith application for trade mark registration for a purpose other than use shall be rejected’. The Guidelines 2022 provide clarifications on the definition of a bad faith application, the factors to consider in defining it, nine main circumstances constituting bad faith and its limitations in possible abuses (the subjects of the said abuses could also be a trade mark applicant, as per Article 68 of the current trade mark law of China).
And, very nicely, the Guidelines 2022 provide plenty of case examples. For instance, in Chapter 2, on the examination and trial of bad faith applications with no intention of use, a total of 21 cases are summarised to further explain the concept of bad faith.
All the above makes the Guidelines 2022 more helpful and comprehensive than before. Meanwhile, this Kat wishes that the specific trade mark number or the official decisions reference number had been provided to help save time, reduce ambiguity, help the user to avoid possible mistakes when needing to cite a specific case and, finally, to support users who want a better understanding of the details of a particular case or its relevance to the other cases.
The first image is Shelly, Tian’s kitten; The following two Tables are generated by Tian.
[Originally published on The IPKat on 10 February 2022]