The latest version of the Guidance for Trademark Examination and Trial ("Guidance")1 introduced several new features to trademark procedural aspects. Among those, today, we wish to shade some light on the deletion of "change of trademark agent" for Chinese applicants. Luckily, foreign trademark applicants can still enjoy changing of the trademark agent (VIP treatment?).
The new Guidance has stipulated that once a trademark has been approved for registration, the trademark applicant "does not need" to conduct change of agency anymore (Part III – Chapter X).
Needless to say, that we find this provision surprising: the professional trust relationship with a service supplier might need an update, a change and such crystallization looks not in line with the needs of companies and actual practice.
However, we feel that CNIPA might have some strong motivation in deleting the change of agent, therefore with humble attitude we do reckon the current situation and we focus on the consequences of such deletion.
First, change of agent is still allowed during the trademark registration process. To this purpose trademark registration process is closed with the granting of the trademark. So, change of agent shall be allowed during the appeal against preliminary refusal (also in its eventual judicial phases) and during the opposition period.
Second, a practical consequence of the impossibility to file the trademark agent change is that for the entire life of the trademark all the communications from the CNIPA to the trademark owner will be sent to the appointed agent at the time of filing. A bit of advice to trademark applicant: Chinese carefully such "life" partner.
We will monitor to understand what happen if the agency ceases its activity, change its company name or address or email or contact person. The rectification of such details shall be usually allowed.
Foreign applicants are allowed to file "change of file recipient" (literally). We have tried to file "change of agent" and our application has been rejected. However, CNIPA has graciously suggested to file "change of file recipient".
In case of trademark disputes -such as invalidation, opposition non-use cancellation- the trademark owner should file the application of change of agent by way of filing supplement materials to the department that examine the case.
One final remark: choosing a trademark agent is crucial in this current situation. Not only give the huge amount of registered trademark obtaining the registration requires a careful advising job, but also the agent will support the company in filing the trademark with CNIPA will be the recipient of all the communications from the CNIPA for the entire life of the trademark.
If someone challenges the validity of the trademark by filing a non-use cancellation or an invalidation after several years after the registration, the trademark agent shall be ready to receive the communication and inform the applicant.
Don't underestimate the trademark agent! Be careful who you appoint for such role.
1. On November 23, 2021, the China National Intellectual Property Administration (CNIPA) published the Guidance for Trademark Examination and Trial ("Guidance"). The Guidance came into effect on January 1, 2022, and the Standard of Trademark Examination and Trial ("Standard"), in force since 2017, were repealed at the same time.
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.