Trademark Mitosis or ex officio division

In cell biology world, Mitosis is a special procedure where the replicated chromosomes are separated into two new nuclei. In Intellectual Property fields, Trademark division is quite the same thing.

Generally speaking, current trademark applications have 8 numbers in China, e.g. 12345678. The divided trademark applications have filing number with the “A” e.g. 12345678A. Let's get started with such “A” applications at first. 

• Initiative Trademark Division: filing number with the “A”

Article 22 of Implementing Regulations of the Trademark Law of the People's Republic of China:

Where the Trademark Office refuses an application for trademark registration on part of designated goods, the applicant may divide the application into another application for the part of which the preliminary approval has been granted. 

For the divided application, the filing date of the original application shall be reserved. Where an applicant applies to divide an application, he shall file an application for division to the Trademark Office within 15 days from the date of receipt of the Notification on Partial Refusal issued by the Trademark Office. 

Upon receipt of the application for division, the Trademark Office shall divide the original application into two separate applications, giving a new application number to the divided one for which preliminary approval has been granted and make the publication.

According the afore said Article 22, the applicant could file the division application initiatively with the Chinese Trademark Office (hereafter “CTMO”) when their application(s) is/are refused partially (namely refused on part of goods/services). 

After receiving the division application, CTMO will divide the original trademark application into two applications if it meets the requirements. 

One application including the approved goods will generate a new filing number, namely “original filing number + A”, and publishes for opposition immediately. 

While the other application including the rejected goods will maintain the original filing number and proceed with the review procedure (possible lawsuit later).

The applicant is entitled to file trademark division only in the situation where its trademark application(s) is refused on part of the designated goods/services. 

That is to say, if your trademark application(s) is rejected on all goods/services, there's no need and no right to file trademark division. 

To make it more detailed, after receiving the partially refusal notification, it usually enters into the below 3 situation:

a) Review, and division

The applicant files the rejection review on rejected goods, and division can be filed together within the legal prescribed time of 15 days.

b) Review, NO division

The applicant files the rejection review on rejected goods, but gives up file division initiatively. Attention here, in this regard, the approved parts will not publish for opposition until the result of review is issued.

c) NO review, NO division

The applicant is not interested in filing rejection review, and then the approved part of application will proceed to publish for opposition directly. So it is not essential to file division.

As to the most applicants, deciding division or not, it should be based on whether the approved goods/services are important sufficiently to divide. 

We always suggest our client filing division if the approved parts shall be the key services or merchandises. An effective division decision will help applicant to enforce the trademark right soon on the main products. 

But don't hurry! Once trademark division is filed, it is no way to withdraw with any excuse. And don't forget all the subsequent fee will be DOUBLE charged as two trademark applications after division is filed. So think TWICE before you do!

In conclusion, trademark division is conditional, initiative and irreversible. But what's interesting is that the case I'm going to follow, which seems to deviate from the principle of trademark division.

• Unexpected Trademark Division: filing number with the “B”

Recently, we have received three original Registration Certificates and also -surprisingly - three Notices of Publication reporting the different trademark filing numbers for the same trademarks, namely three new applications bearing the “B” (See below form). The goods of these trademarks are different, and publish for opposition in different days. It seems an invisible party has divided the original 3 applications into total of 6 separated ones.

Without receiving the rejection notification, without filing the rejection review and division request surely, why these normal applications will be auto-divided and generate another 3 new ones with the “B”? What's wrong with these applications? Who make the Mitosis against these applications? That's a little bit weird thing that confuses us.

After investigation and multiple communications with the CTMO, the cat is finally out of the bag! 

CTMO admits it all results from their mistakes. We further get more detailed explanation from the CTMO regarding these abnormal applications with “B”. The generation of the “B” is because the examiners “miss” in putting some goods/services.

Later mistakes being found out, examiners have to build new application with the “B”. 

At least, the one thing is clear that these “B” applications are not caused by applicant, but by CTMO per se. That is to say, the applicant is nothing but an innocent victim here.

The examiner also admits it is not easy to modify because of the technical problems of their internal system. These “B” applications are the very special existence, and we are not the first and exclusive “victims” for the moment.

If such mistakes would not be amended, it might bring troubles in the future, such as the double renewal fees, the real registration date etc.

At the time of writing, we have sent a formal letter with the CTMO to request the combination of additional abnormal 3 “B” applications. CTMO provided us 2 solutions:

1. If we would like to combine addition 3 applications with B, we need to send back original Notice of Publication and Trademark Certificates to CTMO at first and CTMO will re-examine the 3 applications as new ones.

   In this regard, all of the three applications could keep the earlier original filing date, but it will arouse new rejection or possible opposition during re-examination phase.

2. To avoid double being charged when filing assignment, license, or renewal in the future, the applicant also could consider to re-file 3 new complete trademark applications.

   In this regard, given that the previous trademarks are still valid now, the new applications will be more easily to pass the examination and publish smoothly. However, in this way, applicant should afford the new filing fees.

HFG will keep follow up this matter. After all, the applicant shall not pay for the mistakes of others.

• Useful tips for the A, B, C… Applications in China

To better understand the meaning of different English letters A, B, C… in the filing numbers of trademark in China, the following form is made for the quick reference. Just saving for the rainy day! 

Ariel Huang

HFG Law&Intellectual Property