Chinese Trademark Authorities Take Immediate Action to Cope with COVID-19

The INTA Trademark Office Practice China Sub-Committee of which Amanda Yang is Chair has published this update in the latest INTA Bulletin.

As the first IP office to be impacted by the COVID-19 coronavirus, on February 5, 2020, the China National Intellectual Property Administration (CNIPA) released an official notification explaining how users can make trademark applications during the COVID-19 outbreak, followed by a detailed Q&A to clarify key deadlines in regard to various trademark proceedings.

According to the notification, CNIPA recommends that trademark applications, as well as 23 other proceedings (including change recordal, renewal, and assignment, etc.) be filed online. E-payment options have been made available for public access. As an alternative, submissions in writing can be sent through the mail. In the case of trademark opposition and invalidation proceedings, for example, the type of proceeding should be clearly specified on the envelope for submissions sent via mail. Exhausting these options, applicants based in China may go to their local filing branch but must strictly adhere to the requirements imposed by the branch to maintain a low rate of traffic. Brand owners outside China may instruct their agents to file applications accordingly.

To further address the one-week gap between official actions and applicant inaction due to the COVID-19 outbreak and disruptions at work, CNIPA released Decree 350 to allow applicants to claim for continued protection when the obstacle to the exercise of rights is removed, covering patents, trademarks, and integrated circuit layout design. On February 6, CNIPA issued a detailed Q&A to further clarify how trademark applicants who are missing deadlines may seek remedy through Decree 350. These are the five most frequently asked questions in the Q&A:

  • Which trademark proceedings are eligible for suspension?
  • How do I determine “the day when the obstacle to the exercise of rights arise” and “the day when the obstacle to the exercise of rights is removed”?
  • How do I file the claim of suspension? 
  • What supporting evidential requirements should be provided to supplement a claim?
  • How do I remedy trademark renewal if I am delayed due to the coronavirus outbreak? 

INTA’s Trademark Office Practice Committee—China Subcommittee conducted a thorough analysis of the above official notifications and offers the following insights:

  • As opposed to previous fast trademark examinations, expect a significant drop in Office Actions issued by the CNIPA, particularly with regards to those coupled with deadlines.
  • Expect a drop in the speed at which trademark cases are processed by agents and official examiners.
  • Although Office Actions may be delayed, brand owners globally, in particular, should respond swiftly to evidential requirements requested by their domestic agents as express delivery is also affected.

Publication of Opposition Decisions

Despite the challenges posed by the COVID-19 outbreak, the China Trademark Office (CTMO) will publish opposition decisions online within 20 days of delivery from the post office. As of February 20, the earliest decision was issued on January 2, 2020. 

Compared with decisions made years ago by the judiciary and Trademark Review and Adjudication Department (formerly, the Trademark Review and Adjudication Board), we’re noting a positive and welcome trend toward more transparent and high-quality trademark examinations. This trend also incentivizes data mining for future portfolio management, and resource allocation for enforcement and prosecutions. In particular, more extensive data mining may even expose those bad-faith squatters in opposition proceedings to the public when invoking precedent by brand owners or potential blacklists ex officio.

On the flip side, the publication of opposition decisions is vulnerable to data misuse. In accordance with the notification, when it involves business secrets or private information—where the party concerned requests non-disclosure in writing and the CTMO permits the request, or where the CTMO believes the decision is not suitable for publication—the opposition decision is not subject to disclosure.