The beginning of 2019 brought about two important changes to trademark filing and prosecution proceedings in China. These changes will impact all brand owners.
Update of the China Goods and Service Classification
Effective January 1, 2019, the China Trademark Office (CTMO) has adopted a new 2019 version of the classification table. Goods and service specifications have been updated, and new ones have been added. The 2019 version of the China classification table has incorporated goods and service specifications of the Nice system to a certain extent. However, a significant gap with the 11th Edition of the Nice Classification remains. Rights holders will therefore need to plan and strategize on the adaptation of the specifications in their original foreign filings to the updated Chinese classification table.
Shortened Examination Procedures
Also effective January 1, 2019, a new policy from the China Trademark Office encourages trademark examiners to further reduce the examination period for the examination of trademark filings and prosecution proceedings. Although the policy is not legally binding and does not amend the original terms provided by the Trademark Law, it is very authoritative and will have a very practical impact on the examination procedures. We can indeed expect most examiners to follow the new policy.
In particular, the policy invites examiners to reduce the length of the procedure for the examination of new trademark filings from the customary eight months to six months. The term to complete examination of requests for non-use cancellation and the review of non-use cancellation decisions has been shortened from the statutory nine months to eight months.
The shortening of these procedures aims at reducing the case backlog at the CTMO. From the right holders point of view, obtaining a favorable decision one or two months earlier can also have a very positive impact on their business.
However, there are caveats. Official statistics show that due to the actual headcount at the China Trademark Office and the ever increasing number of new and pending procedures, each examiner can dedicate but a few minutes to each assigned procedure. Shortening the overall deadlines will further reduce the time an examiner can dedicate to each of its assigned cases. It is possible that work quality may suffer and rush decisions may penalize right holders. Marks in English or other foreign languages may be particularly vulnerable, and this may lead to increased litigation and procedures.
In spite of these challenges, right holders can reduce such risks through good planning and appropriate preparations. Early consultation with appropriate counsel is recommended.