China -  Chinese law firm

What are the viable options when a trademark application is rejected?

During examination of a trademark application, if TMO holds that the trademark may be registered by making some modification to the application, such as deleting the goods similar to those of the conflicting marks, the TMO will issue an Examiner's Advice so that the applicant may have a chance to make modifications. If the modification made by the applicant is still not in conformity with requirements of TMO, TMO will reject the application by issuing a Notification of Refusal. After receiving said Notification, the applicant can no longer make modifications to the application.

If the rejection is due to similarity to a conflicting mark, the applicant may forcefully argue dissimilarity of the marks per se, with some supporting documents if there are.

If it appears to be difficult to overcome the rejection by arguing dissimilarity of the marks, the applicant may file a non-use cancellation request against the conflicting registration, but only if said registration is more than three years old.

Alternatively, the applicant may negotiate with the owner of the conflicting registration for either an assignment or a license of the mark. In China, mere consent from the owner of the conflicting registration is not a basis for registration.

If the applied-for trademark is rejected due to lack of inherent distinctiveness, the applicant can request for a review, and overcome the rejection by proving that his mark has acquired distinctiveness through long and extensive use and promotion in China. For this purpose, supporting materials will be needed to sustain his viewpoints.

RSS Feeds