On September 27, 2023, the China National Intellectual Property Administration（CNIPA）released the Guidelines on the Same Day Application Procedure for Trademark Registration (hereinafter referred to as the “Guidelines”) on the official website to help business entities correctly understand the same day application for trademark registration. We hereby conduct a brief review and analysis of the same day application procedure based on the “Guidelines” and practical experience.
The legal provisions on the same day application for trademark registration are mainly reflected in Article 31 of the Trademark Law and Rule 19 of the Implementation Regulations of the Trademark Law. The provisions of the Trademark Law and the Implementation Regulations of the Trademark Law adopt a tiered examination model for trademark registration applications on the same day, fully balancing factors such as “the principle of registration as primary and use as supplementary”, “autonomy of the applicant’s will”, and “balancing efficiency“.
On the basis of the Trademark Law and the Implementation Regulations of the Trademark Law, the Guidelines provide further guidance on the examination procedures, exceptions, and precautions at each stage.
Stage 1: Supplementary Evidence of Use
This stage mainly determines the prior use situation. All applicants will receive the “Notification of for Supplementary Use Evidence for Trademark Registration Application on the Same Day” and be required to submit evidence of the prior use of their trademark before application within 30 days from the date of receipt.
The Guidelines have made specific provisions on the effectiveness of evidence of trademark use in the first stage for the same-day application procedure, clarified the concept of trademark use, and made specific requirements for the form of evidence of use, the time of evidence formation, the type and sample of use, and the user. It is necessary to pay attention to the formation time of the evidence, which must be valid before the application date, and the earlier the better.
If only one applicant submits true and valid evidence of use within the time limit, or if one applicant’s trademark is used earlier, he will be granted the application right of the trademark, and other trademark applications shall be rejected. If all applicants have not submitted evidence of use or the submitted evidence of use cannot prove that one applicant’s trademark was used earlier, the same-day trademark application enters the next stage. Of course, this stage also allows all applicants to actively negotiate and determine the party that has the application right.
Phase 2: Negotiation
If all applicants use on the same day or have not used the trademark, they may negotiate the ownership of the trademark application right on their own within 30 days from the date of receiving the “Notification on Negotiation of Trademark Registration Application on the Same Day” and submit a written agreement. If a written agreement is not submitted within the specified time limit or if the agreement is invalid, it shall be deemed that the negotiation has failed.
The Guidelines clarify the requirements for negotiation agreements. Overall, the agreement should record necessary trademark information such as the trademark application number, trademark name, designated goods or services for use, and require all applicants to jointly sign or seal in the negotiation agreement, and indicate the date of signing. In terms of substantive content, the agreement should clarify that the application right for trademark registration on the same day belongs to one party of the applicant, and should not cause conflicts of rights or harm the legitimate rights of others. The trademark coexistence agreement is not a negotiation agreement.
Stage 3: Drawing lots
If all applicants are unwilling to negotiate or fail to reach an agreement through negotiation, they shall participate in the online or offline drawing of lots according to the drawing method, time, and location specified in the “Notification of Drawing Lots for Trademark Registration on the Same Day“. Those who have not participated in the drawing of lots shall be deemed to have waived their application.
The Guidelines clarify the consequences of all applicants not participating in the drawing of lots within the prescribed time, that is, their applications on the same or similar goods or services shall be rejected or partially rejected. In addition, at this stage, before the issuance of the “Notification of Drawing Lots for Trademark Registration on the Same Day”, if the reason for the examination on the same-day application no longer exists due to trademark transfer, withdrawal, or deletion, the examination procedure for the same-day application will be terminated. If the applicant fails to participate in the drawing of lots after the issuance of the “Notification of Drawing Lots for Trademark Registration on the Same Day”, even if the reason for the examination on the same-day application no longer exists, it shall still be deemed as waiving the application.
Exceptions to the Examination procedure
The Guidelines stipulate several exceptions to the examination procedure for trademark registration applications on the same day, namely situations where the same-day trademark application is partially or completely rejected, including:
1. There is a stable prior registered trademark;
2. Violation of the provisions of Article 19, Paragraph 4 of the Trademark Law regarding the registration application of agencies on goods or service other than agency services;
3. Violation of Article 4 of the Trademark Law regarding bad-faith registration applications that are not intended for use.
4. Other situations that require direct rejection
From some previous cases in practice, the CNIPA generally lists exceptions in the first and second stage notifications, indicating the risk of rejection.
Precautions on the Same-Day Application Procedure
The Guidelines also provide the following precautions for the same-day application procedure:
1. The applicant for trademark registration shall abide by the principle of good faith;
2. Effectiveness of Evidence of Trademark Use
3. Regarding negotiations
4. Regarding the drawing of lots
5. Trademark registration applicants should actively exercise their rights
6. Trademark registration applicants should avoid applying for trademark registration on the same day as their affiliated entities
Epilogue
Although there are relatively few cases of trademark registration applied for on the same day in actual practice, the Guidelines are very important for applicants and agencies who encounter applications on the same day. The Guidelines provide guidance and explanations on the matters that need to be noted in the three stages of the examination procedure.
At the press conference held by the Information Office of the State Council in July this year, the CNIPA introduced the handling of 212 trademark registration applications filed on the same day which are created in bad faith. The Guidelines not only list two cases in the exception section of the examination procedure for same-day applications, namely “Malicious Creation of ‘摩飞'(Morphy in Chinese) Related Same-Day Trademark Application” and “Malicious Creation of Same-Day Trademark Application by Agency”, but also specifically mention in the precaution section of the same-day application procedure that trademark registration applicants should avoid filing trademark registration applications with their affiliated entities on the same day. Due to the fact that applying for trademark registration on the same day objectively delays the examination cycle of trademark registration, applicants should try best to avoid the occurrence of filing trademark registration application with their subsidiaries, holding companies and other business entities of associated relationships on the same day.
The applicant may refer to the Guidelines issued by the CNIPA or consult the trademark agency when encountering the examination procedure of trademark registration application on the same day.
(Provided by Lei ZHU and Zhi WANG from the Trademark Department of SPTL)
