CHINA Trends and Developments Contributed by: Qiang Ma, Jingtian & Gongcheng
Trade Marks Trade mark registration landscape
which has the slightest chance of being refused in later steps. Moreover, the preliminary exami - nation has been increased from two steps to three steps in recent years, which has imposed greater pressure on examiners and made them more inclined to be conservative. The stricter examination criteria have led to increased difficulty for brand owners to reg - ister trade marks in recent years. In terms of absolute grounds, more trade marks have been determined to be deceptive or misleading by the CNIPA’s unreasonable examination, includ - ing overly strict standards, violation of integrity principle and mechanical translation. As for rela - tive grounds, the similarity standard has been more strict and overcoming blocks of prior trade marks has become more difficult, whether through the coexistence fact or the letter of con - sent (LoC). These have resulted in a significant increase in rejected trade mark applications, which negatively impacts brand owners and dampens market dynamics. Absolute grounds: overly extended deceptive/ misleading provision In the last year more trade marks have been determined to be deceptive or misleading. Statistics show that refusal on deceptiveness grounds has increased by 10% and the over - turning rate in review has decreased from 20% to less than 8%. This phenomenon has been caused by the CNIPA’s unreasonable examina - tion in three aspects as follows. • The standards for deceptiveness are overly strict. Large quantities of merely suggestive trade marks that should have been registered are determined as deceptive or misleading descriptions of product quality. For example, the mark 幼肌柔 (the Chinese equivalent of “infant skin tender”) was recently rejected for
The China National Intellectual Property Admin - istration (the “CNIPA”) has adopted a three-step mechanism in preliminary examination of trade marks and an internal two-way performance evaluation mechanism for examiners. Under the pressure of avoiding penalties for examination defects, examiners are compelled to adopt a more cautious and rigorous approach in their review of trade mark applications. This increased scrutiny often leads to a more stringent exami - nation, resulting in increased challenges for applicants. Consequently, both domestic and foreign entities may find it increasingly difficult to successfully register their trade marks, as the focus shifts towards minimising risks rather than facilitating approvals. This trend is likely to continue, further complicating the landscape for trade mark registration in the near term. The CNIPA’s mechanism of three-step preliminary examination and two-way performance evaluation In the CNIPA’s preliminary examination phase, a trade mark has to go through three steps. These are: examining; checking; and signing. Exam - iners in each step will conduct a substantial examination and review the decision made in the previous step. A trade mark can only enter the public notice phase once it has been approved at all three steps. Alongside the three-step examination, the two- way evaluation mechanism requires that the examiners of different steps who make contra - dictory decisions conduct mutual evaluation. The discrepancy will be recorded as a mistake and affect their performance. Therefore, exam - iners tacitly adopt a conservative strategy and tighten up examination criteria to avoid mistakes and conflicts. They will reject an application
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