Preface

The trademark registration in China always follows “the principle of first application”, i.e. the application date is the criterion to judge the order of applications. Hence, in general, both the trademark agencies and applicants are aware that the application for trademark registration should be made as early as possible, on a first-come-first served basis. Even if it is a day late, the client might lose their favorite trademark. Practically, from time to time will encounter two or three or even more applicants, happen to apply for the same or similar trademarks on the same day, under this circumstance, it will involve how to deal with the applications at the same day, also, how to deal with “collision date” with other trademarks. Although trademark applications on the same day is not common, once encountered, it is really distressing. Hence, the author will comb the relevant process of trademark applications on the same day in this article, hoping to be helpful to the majority of trademark applicants. 

Legal Basis of Trademark Application at the Same Day

The legal provisions relating to the trademark application on the same date, mainly including: 

Article 31 of the Trademark Law: Where two or more applicants apply for the registration of identical or similar trademarks for on the same or similar goods, the trademark that was first applied for shall be preliminary approved and published; where an application is filed on the same day, a preliminary examination and approval shall be given to the trademark which was used priorly, and other persons’ trademarks shall be refused and not be granted for the publishment. 

Article 19 of Implementing Rules of the Trademark Law, where two or more applicants apply for the registration of identical or similar trademarks on the same or similar goods at the same day, each applicant shall, within 30 days from the date of receipt of the notice from the Trademark Office, file evidence of prior use before the application for registration. Where the use of trademarks at the same day or are not be used at all, each applicant may, within 30 days from the date of receipt of the notice from the Trademark Office, negotiate on his own and file the written agreement to the Trademark Office. Where the parties are unwilling to consult or the consultation fails, the Trademark Office shall notify each applicant to determine one applicant by drawing lots and reject or reject partially the registration application of the others. Where the Trademark Office has notified the applicant but the applicant has not participated the drawing lots, the application shall be deemed to have been abandoned, and the Trademark Office shall notify in writing the applicant who has not participated the drawing lots. 

General process of trademark applications at the same date and brief overview 

1.  Evidence Confrontation 

For the trademarks that are confirmed to be applied for at the same date, the review board will issue to the trademark applicant or its agency a Notice on Filing Supplementary Evidence on Use for the Trademark Applications at the Same Date, requiring each applicant to file evidence of prior use of the applied-for trademark within 30 days from the date of receipt of the notice. Where no evidence of use is field within the time limit or the evidence of use is considered to be invalid by the Trademark Office, the trademark shall be deemed to have not been used. 

At this stage, if all applicants filed valid evidence of use within statutory period, as per the date shown on the evidence of use, the Trademark Office will confirm the applicant who use the trademark earliest to gain the right on the application, while reject or partially reject other person’s application. If only one party of the applicant files valid evidence of use, the Trademark Office shall determine that the party filing valid evidence of use gains the right on the application and reject or partially rejects other applicants. If each applicant does not file valid evidence of use, then, the Trademark Office will issue a second notice and enter the following process. 

It should be noted that, at this stage, sometimes the Trademark Office will not only list identical or similar trademarks that filed on the same date, but also the priorly identical, similar trademarks which were identified during the substantive examination, or prohibitive clauses were listed together in the notice.

2.   Consultation Gamble

If the Trademark Office determines that the evidence of use filed by all applicants is invalid, or all applicants fail to file valid evidence of use within the statutory period. The Review Board will issue separately to the trademark applicant or its agency a Notice of Consultation on Trademark Applications at the Same Date, requiring each applicant to negotiate by himself within 30 days from the date of receipt of the notice and reserve the application of one party, and report the agreement in writing to the Trademark Office. If the agreement is valid, the Trademark Office shall, in accordance with the agreement, apply for approval and rejection accordingly. If each applicant fails to file the written agreement or the agreement is invalid within the statutory period, the agreement will be regarded as no agreement, then, the Trademark Office will issue a third notice and enter the following process. 

3.  Who will gain the right after drawing lots

In the case of fruitless negotiation or invalid agreement among trademark applicants, the Review Board will issue separately the Notice of Drawing Lots for Trademark Applications at the same Date to the applicant or its agency, specifying the start time of the draw and attaching the notes of the draw. If all applications are completed in accordance with the relevant procedures and attend the drawing lots, the successful applicant shall be designated as the trademark registration applicant according to the result, and other applicants shall be rejected or partially rejected. If one party participates in the drawing and the other parties do not participate in the specified time, then, the party who is presented will win the drawing. If all applicants do not participate the drawing, all or part of their applications will be rejected or partially rejected. 

Examination on Trademark Applications filed on the same day—Drawing lots

1. Overview of the Background

As per the regulations of the Trademark Office, the on-site drawing lots has always been adopted. Applicants need to prepare materials in advance and gather at the Trademark Office from all over the country to participate the on-site drawing lots. Since 2020, the on-site drawing lots cannot be operated normally due to the COVID-19 pandemic. To achieve the goal of compressing the average examination period of trademark registration to less than four months this year, under the direct guidance of the China National Intellectual Property Administration, the Trademark Office adheres to a problem-oriented approach, actively respond to social concerns, launch new measures in a timely manner, online drawing lots is adopted to ensure trademark applicants gain confirmation on rights as soon as possible, effectively save enterprise cost and administrative cost. (The information below is from the official website of China Intellectual Property Administration Trademark Office)

(Words in the photo above: the Notice on Postponing the time and changing the method of drawing lots for the trademark applications filed on the same day issued by China Intellectual Property Administration Trademark Office)

30th June 2020, The Trademark Office for the first time issued a notice on changing the time and method of drawing lots for the trademark applications filed on the same day, 4 drawing lots for the trademark applications filed on the same day have been changed from offline to online, since then, the online drawing lots has gradually become normal. In 2020, the Trademark Office has completed a total 5 batches of 1,544 pairs and 3,257 pics online drawing lots for applications for trademark registration on the same day. The process system is stable, after the notarization, the process and results of drawing lots are authentic and valid. 

Due to trademark registrations filed on the same day is not common, according to the announcement of the Trademark Office and the practice, generally, examiners will classify the trademarks to be drew in batches at fixed times each year. From The List of Trademarks for Online Draw Lots between 29th March and 1st April 2021, published by China National Intellectual Property Administration in January 2021 (official link:  https://www.cnipa.gov.cn/art/2021/1/20/art_2073_156806.html), we can see that applicants for this batch reached 600 groups, many of which have applied in 2017 and 2018. It can be seen that trademark registration filed on the same day will need a long time to enter the stage of draw lots, which is the inevitable situation of such kind of trademark examination process. 

2. Process of Online Draw Lots

The procedure of drawing lots is a more complicated work in the examination of trademark registration filed on the same day, the trademark applicant or its agency, examiner and notaries need to work together to complete it. Now, the article will comb briefly the specific process of the online draw lots.

Collect Notice on Draw Lots for Trademark Registration on the Same Day 

As per the time specified in the notice, log in the designated notary website for registration, upload the required documents, wait for the preliminary examination

Pass examination, receive confirmation, wait for draw lots 

Log in again at the time specified in the notice, draw lots

Gain the result of draw lots, download the result of draw lots and the notarial certificate

At the stage of drawing lots, the applicants or their representatives need to read carefully Notice on Draw Lots for Trademark Registration on the Same Day and Notes to Draw lots for the Trademark Registration on the Same Day, especially, read carefully the online registration time, online draw lots time, required documents to be upload for review, avoid for miss the designated time, uploading files are incomplete. As there is only one opportunity for uploading the documents, if the applicant or their representative has any questions about the document, they may consult with the contact person designed by the Notice.  

The exciting process of drawing lots for the trademark registrations on the same day has come to an end, but the battle of the trademark registration is still going on. As per the result of drawing lots, the Trademark Office will make an examination decision on the trademark that won the drawing lots. If the trademark registrations on the same day are excluded, there are still existing prior right conflicts or prohibitive clauses, then, the trademark won the draw lots will still be rejected and may not be registered in the end.

The author believes that the result of draw lots is independent of man’s will, since it has reached the stage of drawing lots, the applicant needs to prepare both hands in advance, put a positive attitude to the ‘fight’, wining the draw lots is gratifying, but you cannot manifest it. ‘Misfortune might be a blessing in disguise’, every cloud has a silver lining, there may be a new opportunity.