HOW TO SHORTEN THE TRADEMARK EXAMINATION PERIOD IN A REAL SENCE
2024-06-28 Trademarks Regina FENG

As per the latest news published by China National Intellectual Property Administration in 2021, China National Intellectual Property Administration will continue to improve quality and effectiveness of examination of intellectual property right, the examination duration of trademarks and patents with high value, also, the examination duration of other business will continue to be compressed, i.e. the average duration of review applications for registering trademarks have been compressed from 9 months to 4 months, also, we noted that, the current statistical index of trademark examination duration is based on the publication date of initial examination, it cannot accurately reflect the overall time taken by the applicant to obtain the confirmation on the intellectual property rights. Currently, in addition to trademarks’ average examination period of 4 months, also, there is a statutory announcement period of initial examination of 3 months, and necessary processing time for dealing with specific situation, mailing paper documents, issuing registration announcement, making and delivering certificates. Hence, the overall period of actual trademark registration is about 8-9 months on average. In order to shorten the review period in a real sense and avoid unnecessary delay, we should do the followings in advance when registering trademarks: 

1. When choosing a trademark and a logo, it shall avoid the relevant prohibition regulations stipulated in the Trademark Law, and avoid being rejected by the China National Intellectual Property Administration due to obvious absence of trademark, misidentification or adverse effects of trademarks. 

2. It is necessary to do a good job of searching similarity of prior trademarks before the registration, through the search of similar trademarks, we can reduce the probability of trademark rejection, so as to shorten the duration of trademark registration. 

3. The required documents for trademark registration should be fully prepared, goods or services items should be standardized, so as to reduce the possibility of correction in the formal review procedure and to avoid extending the review period.  

4. Combined trademarks are suggested to register separately to reduce the risk of registration, and to shorten the review period. Given that China National Intellectual Property Administration conducts a separate search for each element of the combined trademark, if any element of the combined trademark has the prior similar trademark, the application for the registration of the trademark is judged to be similar, furthermore, the application for the registration will be rejected. Hence, the trademark application will be extended invisibly. 

5. Regarding trademarks lack of distinctiveness, it is suggested to add significant part to enhance the distinctiveness of the trademark, so as to increase the change of the registration and to shorten the application period. 

6. To prepare in advance and actively respond to the opposition, it is possible to be challenged by any other party at any time after the registered trademark enters the announcement of initial examination, once the trademark is challenged by others, the applicant should file corresponding evidence to prove the distinguishing and legitimacy of the trademark in a timely manner, and actively respond to the opposition. 

In addition to shortening the review period for trademark applications, the review period for subsequent procedure will also be compressed, China National Intellectual Property Administration has proposed that, by the end of year 2021, the average periods of reviewing trademark transferring, opposition, review of rejection and announcement of invalidation have been reduced separately to 1.5 months, 12months, 5.5 months and 9 months. The period of examining of change and renewal of trademarks of electronic applications have been re-reduced 1/5, the whole process of authorization and confirmation of the intellectual property rights should be reduced indeed to improve applicants’ satisfaction and sense of gaining. 

业务领域:
TTrademark registration, assignment, renewal, recordation of licensing contracts, trademark opposition, cancellation, review, pledge, negotiation on trademark transaction and assignment, providing legal suggestions involving trademark protection and safeguarding, and relevant legal consultations.
此案件代理人
Regina FENG Senior Partner; Business Direc 联系电话:010-68390860
邮箱:fr@janlea.com.cn
擅长领域:TTrademark registration, assignment, renewal, recordation of licensing contracts, trademark opposition, cancellation, review, pledge, negotiation on trademark transaction and assignment, providing legal suggestions involving trademark protection and safeguarding, and relevant legal consultations.
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