After years of expectation, China has begun to accept
multi-class trademark applications since the newly-revised
Trademark Law became effective on May 1, 2014. Does this practice
meet the anticipation of the trademark applicants?
As a common practice in many countries, multi-class trademark
applications streamline the registration process in a cost
effective manner. Not only the cost for filing is reduced for extra
class(es) in one application, but that for future renewal,
assignment, and recordation of name/address change, etc. can also
be significantly reduced. Multi-class registration also brings high
efficiency to administration of the trademark portfolios for brand
There is no doubt that the benefits of multi-class application
are expected by trademark applicantswho have a large trademark
portfolio in China, especially in the context that China has been
ranked No.1 in terms of the number of trademark applications for
more than ten years.
But the assorted regulations from the Chinese Trademark Office
are far from satisfactory. As the new multi-class application
bringing efficiency in portfolio management, it also comes with
imperfections, and at least for now, one of the most practical
benefit, cost-saving, is much less promising.
According to the regulations for multi-class applications, the
official fee is calculated per class and there is no discount for
any extra class(es) in one application. After registration, the
official fee for future recordation of name/address change,
assignment, license and renewal is also counted on the number of
classes by current standard. In a word, there is no difference for
official fees between single-class applications and multi-class
Even so, multi-class applications do bring efficiency to a brand
owner's administration work for its trademark portfolios. For
instance, to better facilitate administration work, one multi-class
registration only has one registration number and one
filing/registration date. However, this convenience is based on the
condition of no division of the registration in future. The new law
and regulations only allow an application to be split in the event
of a partial refusal. That is to say, the applicant cannot split a
multi-class application if someone files an opposition against only
partial of the goods/services or the applicant/registrant tries to
assign partial goods/services. The window for a division only opens
when the Trademark Office issues a partial rejection to some of the
designated goods/services. In this case, the applicant can choose
to divide the multi-class application into one application covering
the approved goods/services so as to get registration first, and
one application with rejected goods/services for the purpose of
filing a request for review.
Another drawback of multi-class applications is that if the
description of goods in one class is not acceptable, the process of
the entire application will be delayed for further examination. It
is of course the same situation in other countries, but it seems
more risky in China as the Chinese Trademark Office may incline to
only give one opportunity to the applicant for amendment of
goods/services during the prosecution, and may refuse the
application if the applicant fails to make amendments properly in
this one-time opportunity. This brings high risk to the
applications in other class(es) in which the description of
goods/services is acceptable.
Therefore, it seems that the advantage of the new practice of
multi-class application in China is limited. Possibility of
reduction of attorney fee may be one of the expectations, but
balancing the pros and cons in the post-registration period, the
brand owners may be caught in a dilemma. Before there is any change
to the fee policy and the practice of division of multi-class
application, this new practice is not as exciting as was
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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