On September 20, 2023, the CNIPA issued Guidance for Same-Day Trademark Applications (hereafter referred to as the Guidance). The Guidance was made to help trademark applicants in understanding the rules and procedures of same-day trademark applications.
China follows the "first-to-file" principle for trademark registration, supplemented by the "first-to-use" principle. When two or more applicants apply for identical or similar trademarks on the same day for the same or similar goods or services, the prior-used trademark will be preliminarily approved and published. The procedure of Same-Day Trademark Applications examination determines the rights of application for trademark.
The Guidance explains the three stages in the examination of Same-Day Trademark Applications:
First Stage: Submission of Evidence of Use
The primary purpose of this stage is to assess which mark is used earlier. The party that can prove prior use obtains the rights of trademark application. If none of the applicants submits evidence of use or the evidence submitted is insufficient to prove prior use, the trademark enters the next stage of examination.
For same-day trademark applications, the CNIPA issues a "Notice to Submit Evidence of Use for Same-Day Trademark Application" to all applicants, which should submit evidence of prior use within 30 days of receiving the notice. Failure to submit evidence or submitting ineffective evidence is considered as non-use.
If only one applicant submits genuine and effective evidence of use within the deadline, that applicant obtains trademark application rights, and the applications of other non-using applicants for the same or similar goods or services are rejected. If all applicants provide genuine and effective evidence within the deadline, and the usage dates differ, the applicant with prior use gains trademark application rights, and the application of the later user is rejected.
Same-day applicants who reach an agreement during the evidence submission stage or voluntarily give up the entire or part of the registration application for certain goods or services, which no longer conflict with the applications of other parties, may not be further notified for negotiation.
Second Stage: Negotiation
If no applicant can prove prior use or the prior use cannot be determined, the applicants can reach an agreement through negotiation. The applicant agreed upon in the negotiation obtains trademark application rights. If negotiation fails, the trademark application proceeds to the next phase.
Applicants who have used the mark on the same day or have not used the mark can negotiate the ownership of trademark application rights within 30 days of receiving the "Notice of Negotiation for Same-Day Trademark Application." If a written agreement is not submitted within the specified period or the agreement is invalid, negotiation is considered unsuccessful.
Applicants who reach consensus through negotiation and submit written agreement within the deadline will be granted trademark application rights based on the agreed-upon terms. The applications of other parties for the same or similar goods or services are either rejected or withdrawn.
Third Stage: Drawing Lots
For applicants who are unwilling to negotiate or fail to reach an agreement, the drawing lots process is used to determine trademark application rights. Applicants must participate in the drawing lots according to the specified method, time, and location mentioned in the "Notice of Drawing Lots for Same-Day Trademark Application." Failure to participate is considered as waiver of the application.
If only one applicant participates in the drawing lots within the stipulated time, that applicant gains trademark application rights, and the applications of other parties for the same or similar goods or services are rejected. If all parties participate in the drawing lots within the stipulated time, the applicant drawn gains trademark application rights, and the applications of other parties are rejected. If no party participates in the drawing lots within the specified time, the applications of all parties for the same or similar goods or services are rejected.
If, before the issuance of the "Notice of Drawing Lots for Same-Day Trademark Application", the reasons for the examination of the same-day trademark applications no longer exist due to transfer of the trademarks to the same entity, withdrawal of the application, or reduction of goods, the examination process is terminated. After the issuance of the notice, failure to participate in the drawing lots, even if the reasons for the examination of same-day trademark applications no longer exist, is considered as waiver of the application. The examination of same-day trademark applications proceeds based on the drawing lots results.
The CNIPA further lists exceptions to the examination on Same-Day Trademark Applications, which include:
Existence of a stable prior registered trademark:
If a third party, other than the same-day applicants, has already obtained registration for an identical trademark in conflicting goods or service classes, and the rights of that prior registered trademark are not under cancellation, revocation, or invalidation procedures during the examination of same-day trademark application, it directly leads to partial or complete rejection of the same-day applications.
Violation of Article 19(4) of the Trademark Law:
If a trademark agency applies for trademark covering goods or services outside its service scope, the mark is directly rejected based on Article 19(4) of the Trademark Law.
Violation of Article 4 of the Trademark Law:
If the same-day registration application is identified as a malicious application not intended for use, it is directly rejected based on Article 4 of the Trademark Law.
The CNIPA lists several exceptions to the examination on Same-Day Trademark Applications
For instances, in the case of "Bing Duan Duan" trademark hijacking, two companies from Shenzhen and Henan engaged in the registration of the "Bing Duan Duan" trademark in Class 3 for products such as facial cleansers, resulting in a same-day trademark registration application. The Beijing Organizing Committee for the 2022 Winter Olympics and Paralympics had previously applied for the registration of the "Bing Duan Duan" trademark for all goods in Class 3. The "Bing Duan Duan" applications of the two companies were directly rejected.
The CNIPA further outlined considerations in the Same-Day Trademark Application Procedure, specifically:
Principle of good faith
Applicants should follow the principle of good faith in the Same-Day Trademark Application procedures, which requires responding to notifications in accordance with the requirements specified in the notification letter, providing truthful and valid evidence materials, and submitting negotiation documents that meet the genuine intentions of both parties.
About Evidence of trademark use
The evidence of use submitted by the applicant should be genuine and effective. The evidence shall be formed prior to the filing date of the particular application, showing the goods the application covers, and showing the mark sample applied for. The evidence of use submitted should show the actual user of the trademark is the applicant or its licensee. The evidence of use shall be submitted within the required term.
The negotiation agreement shall clearly record trademark information like the application number, mark name, designated goods or services, etc. All parties to the same-day application execute the negotiation agreement and indicate the date of execution. The negotiation agreement shall clearly specify which party obtains trademark application right and harm the legitimate rights of others. Trademark negotiation agreement shall be submitted within 30 days since the receipt of the "Notice of Negotiation for Same-Day Trademark Registration."
About Drawing Lots
The participants in the drawing shall be representatives or agents entrusted by the trademark applicants. The same representative should not represent both sides (or different parties) of the same group of applicants in the drawing.
The same-day trademark registration procedure involves different stages and is time consuming. The CNIPA encourages the applicants to actively cooperate with the same-day trademark registration examination and try to avoid filing same-day trademark applications with affiliated companies.
The CNIPA has been exerting great efforts in providing guidance on the specific trademark application procedures and facilitating the applicants.
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.