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Short deadline, high pressure. Appeal against Rejection in China
In recent years Chinese Trademark system is being under extreme stress due to tremendous number of filings that no country has ever seen before[i]. In 2017 were filed 5.7 million of application and in 2018 7.3 million.
All these new applications have been added up to those already filed and registered in the previous years. As a natural consequence in the beginning of 2019 the examiners going to make evaluation of similarity among signs must climb a mountain of over 18 million trademarks.
Well the result is that rejections are quite common, probably (data are not official) something around 70-80% of the new applications are rejected[ii].
In this scenario rejections are quite common and must not be taken as final. They are just a provisional result of an administrative procedure that can be overturned to good result in favor of the applicant. According to CNIPA a total of 322,000 cases of trademark review were received in 2018 and 265,000 cases were closed.
What to do in case of rejection? Two possibilities: abandon the application or appeal to trademark Review and Adjudication Board. And here it comes another interesting point. In case you wish to appeal there is a notoriously short deadline.
The good news? Recent practice extended this deadline from 15dd to 30dd, but this only comes out as result of legal dungeons. Herein a few clarifications to understand when and why the deadline to file review against preliminary rejection is 30 days (instead of 15dd).
How to calculate the deadline for appeals against provisional refusal in China?
For International Trademark applications rejected by the CTMO:
On the WIPO notice that notifies that the trademark application has been preliminary rejected by the CTMO it is indicated that: any request of review shall be filed to trademark Review and Adjudication Board, through a qualified Chinese agent or attorney, within 15 days from the receipt of this notification.
According to art.10 Impl. Reg. to Trademark Law and the CTMO's recent practice, in case a notice is sent via email, the same notice shall be regarded as duly communicated to the interested party upon the expiration of the 15th day from the sending out of the notice. Therefore, being the WIPO notices sent out via email, the deadline for filing the appeal against an IR mark is 15 days (communication of the notice) + 15 days (appeal term), therefore 30 days from the date that the WIPO sent out the notification.
For the National application preliminary rejected:
According to ar. 34 TML, if dissatisfied with the refusal, the applicant may file a rejection appeal with the Trademark Reviewand Adjudication Board (“TRAB”) within 15 days from the receipt date of the decision.
In the practice the CTMO has two ways to send out the official documents to the Chinese agents. One is the traditional post office and then there is a “new” way dedicated only to the appointed agents who can now receive some official documents, such as refusal notification, filing receipt & etc. by electronic way.
If the notice is sent via post office the agent has 15 days from its receipt to file the appeal. If the notice is sent via electronic via the agent has 30 days from the sending out day to file the appeal (for the same reasons above).
[i]According to last released WIPO IP Facts 2018 “The office of China's class count of 5.74 million ranked first followed by a count of 613,921 at the office of the U.S. (...) These two offices were followed by that of Japan (560,269), the European Union Intellectual Property Office (EUIPO; 371,508) and that of the Islamic Republic of Iran (358,353)”. In addition, trademark filing activity proceeded steadily in 2018. Data just released by CNIPA shows that in 2018, the number of trademark registration applications in China was 7.371 million. The number of domestic effective trademark registrations reached 18.049 million.
[ii]According to CNIPA a total of 322,000 cases of trademark review were received in 2018.
HFG Law&Intellectual Property
