New Policies about the Examination Procedures of Trademark Administrative Cases

On March 24, 2016, the Trademark Office of China (“CTMO”) issued some new policies about the examination procedures of trademark administrative cases, involving such aspects as evidence preparation, Office Action (“OA”), express examination procedures, etc. These measures aim to provide more efficient procedures for concerned parties. After being launched, they have aroused broad attention among and won wide positive praises by trademark owners and professionals. These measures mainly focus on: I. Provide Guiding Opinion on OA Notice by the Examiner

The Examiner will include some explanatory or instructive contents in the notification of OA, so that applicants can have better understanding on the Examiner’s thoughts, thus make response to OA more pertinently and accurately.

The Examiner will include some explanatory or instructive contents in the notification of OA, so that applicants can have better understanding on the Examiner’s thoughts, thus make response to OA more pertinently and accurately.

The old practice of the CTMO gave the applicant chance to reply to OA once only, which resulted in that many applications were just rejected directly at the stage of formality examination, if the Examiner considered that the OA response did not meet their requirements. Under most situations, OA refer to “non-standard” descriptions of goods/services. To avoid such rejection, when replying to the OA, the applicants had to be very cautious and conservative in amending the specifications. Normally, trademark attorneys suggested client replacing the descriptions in question with goods/services items in the official Classification Guidance Book which was edited based on Nice Classification, in order to assure the safety of OA response. However, it happened quite often, especially for foreign applicants that, there is no “standard” items found in the Book as exactly the same as those goods/services to be covered by the new applications.

This new rule is expected to reduce the embarrassing situation of previous OA practice as discussed above.

Read the entire article.