According to Article 31 of the China Trademark Law, the principle of "first-to-file" is the basis for acquiring trademark rights in China, with actual use as a supplement. Based on the principle of first-to-file, the application date is particularly important for a trademark.
In recent years, with the increasing number of trademark applications in China, it is inevitable that there will be cases where identical or similar trademarks are filed on the same day with the National Intellectual Property Administration ("CNIPA"), commonly known as "same-day applications." So how to determine the applicant for trademarks filed on the same day? Article 19 of the Regulations for the Implementation of the Trademark Law provides clear rules: "If two or more applicants separately file applications for registration for identical or similar trademarks over the same or similar goods on the same day, each applicant shall submit evidence of prior use of the trademark within 30 days from the date of receiving the notification from the Trademark Office. For cases where the trademarks are used on the same day or not used by either party, the applicants may negotiate within 30 days from the date of receiving the notification and submit a written agreement to the Trademark Office. If they do not wish to negotiate or fail to reach an agreement, the Trademark Office will determine one applicant by drawing lots and reject the registration applications of others. If the Trademark Office has notified the applicants but they did not participate in the lots drawing, it shall be deemed as abandonment of the application and the Trademark Office shall notify the non-participating applicants in writing."
In summary:
- Both parties submit evidence of use, and the trademark belongs to the party that prior used it.
- If both parties do not use the marks, negotiation is required.
- If negotiation is not desired or does not reach an agreement, lots drawing will be conducted.
Although the process seems simple, in practice, it often takes a long time to determine the applicant through drawing lots, around two years. This provides an opportunity for some applicants to exploit the longer examination period of same-day applications.
How do these applicants make use of same-day applications?
Firstly, they use different company names to submit identical trademark applications over the same or similar goods or services on the same day to the CNIPA.
Then, the CNIPA will initiate a same-day application review process, which will take a very long examination time.
The same-day applications will live very long and will hinder the later trademark applications. As it will take a longer time to examine the same-day applications, the examiners usually issue the decision not approving the registration of the later trademark applications without waiting for the final status of the cited mark.
Generally, same-day applications should be coincidental, where different applicants coincidentally apply for identical or similar trademarks for the same or similar goods or services. However, in the practical examination, same-day applications are often not coincidental situations. It becomes a tool for those bad faith applicants to bar the registration of the other party's mark and such actions obviously do not meet the spirit of the Trademark Law.
We hope that as trademark laws and regulations develop, and with changes in the trademark protection environment, actions exploiting legal loopholes can be promptly curbed. This will ensure that trademark applicants genuinely apply for registration with the intention of using the trademarks, allowing trademarks to truly serve as signs for identifying and distinguishing the origin of goods or services.
On June 13, 2023, the CNIPA issued an interpretation of Conditions for Suspending Review Cases, which specifies seven explicit situations that require suspension and three situations that can be suspended based on specific case circumstances. According to the interpretation of Conditions for Suspending Review Cases, we assume the CNIPA will suspend the examination of review of refusal cases until the final status of the bad faith same day applications as the cited marks is confirmed. If in this way, we consider those bad faith same-day applications can be restrained to some extent.
Lastly, as trademark real applicants, we highly recommend them filing their mark as soon as possible in order to avoid that third parties rush to register their own marks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
