What is same-day applications? According to Article 31 of the Trademark Law: where two or more applicants apply for the registration of identical or similar trademarks for the same or similar goods, the preliminary approval and the announcement shall be made for the trademark that was first filed. Where applications are filed on the same day, the preliminary approval and the announcement shall be made for the trademark that is used the earliest, and the applications of the others shall be refused.
According to the data published on official website of the China Intellectual Property Administration, the number of trademark applications reached 7.837 million in 2019. The daily number of trademark applications is about 21,471. Under the premise of such a number of applications, same-day trademark application is the often case.
It is not difficult to solve the problem of applying same or similar marks for same or similar goods by different applicants on the same day. Article 19 of the "Implementation Regulations of the Trademark Law" provides a solution: "where two or more applicants respectively apply for the registration of identical or similar trademarks used on the identical or similar goods on the same day, each applicant shall, within thirty days from the date of receipt of the notification of the Trademark Office, submit a proof of his prior use of the mark in respect of which he has applied for the registration. Where the applicants used the mark for the first time on the same day or where none of them has used the mark, they shall try to resolve the matter through consultation, and submit a written agreement to the Trademark Office within thirty days from the date of receipt of the notification from the Trademark Office; where the applicants are reluctant to resolve the matter through consultation or an agreement is not reached, the Trademark Office shall notify the applicants that one applicant will be singled out by lot, and reject the applications filed by the other applicants. Where the Trademark Office notifies an applicant, but the applicant does not show up and draw his lot, his application shall be deemed to have been abandoned, and the Trademark Office shall notify in writing the applicant who has failed to show up."
Based on the legal provisions, applicant who filed the trademark application with other applicants for the identical or similar trademarks over same or similar goods on same day should focus on seizing the following opportunities:
First Stage: submitting use evidence
When the examiners noted that the identical or similar marks over same or similar goods were filed by different applicants, they will first issue the "Notice for Supplementary Use Evidence of Trademark Application Filed on the Same Day". The Notice requires each applicant to submit the mark use evidence over the concerned goods within 30 days from the date of receipt of the notice. In particular, the notice emphasizes that "if there is no evidence of use within the prescribed period or the evidence is invalid, the mark shall be regarded as not used."
Based on the Notice, applicants must: 1. monitor the time limit for supplementary use evidence, and no time extension is available; 2. pay attention to retaining the evidence of trademark use and submit it to the official within the legal time limit.
At this stage, the applicant who provided earlier and valid evidence of use, its trademark will be approved for registration, and the trademarks of others will be rejected.
Second Stage: both parties negotiating on their own
If all concerned applicants did not submit valid use evidence in first stage, the Trademark Office will issue the "Notice of Negotiation for Trademark Application Filed on the Same Day", which requires them to resolve the conflict of interests through negotiation and report the written agreement to the Trademark Office within 30 days from the receipt date of the notice. The parties need to reach an agreement by indicating whose application should proceed and whose application should be abandoned.
The parties can fully consider the industries, business needs, etc. during negotiation and then make a decision. It is best for them to achieve a win-win agreement. However, the 30-day period is still relatively short for negotiation and it is still difficult for the parties to reach a successful agreement.
Stage 3: Lottery
If neither party has provided valid evidence of use and has not reached a written agreement, the Trademark Office will issue a "Notice of Lottery", which will inform the detailed lottery time, place and required materials, etc.
This stage basically depends on luck. Applicants should strictly monitor the lottery time. The notice specifically states that applicant who has not participated in the lottery shall be deemed to have waived their trademark application for registration.
Applicants who do not participate in the lottery in time will receive a further notice from the Trademark Office, which indicated that their application is deemed as abandoned. Receiving this document means that your trademark application will be invalid.
Don't panic when you apply for the identical or similar trademark with other parties on the same day. You can follow different procedures and official requirements to prepare and submit evidence to actively strive for trademark registration.
Although there are many solutions to the case of the same day application, it is recommended that the applicant file a trademark application for registration in time after the trademark design is completed to avoid unnecessary office action and the risk of official refusal due to existence of prior identical or similar mark. It is also important to conduct trademark search before filing in order to better evaluate the availability for registration and use. You can conduct trademark search in China through Kangxin IP Platform (https://eservice.kangxin.com) for free.
Originally published by Kangxin Partners, August 2020
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.