The latest version of "Guideline for Trademark Examination and Trial" will come into effect on January 1, 2022 (November 2021)
On November 22, 2021, the CNIPA released the "Guideline for Trademark Examination and Trial" (Announcement No. 462, herein after referred to as the Guideline for short), which would be implemented on January 1, 2022, at which time the original "Guideline for Trademark Examination and Trial" would be repealed. The Guideline is divided into two parts, the first of which includes the newly added formal review and practical work of trademarks, whereas the latter contains the revised substantive standards of trademark examination and trial.
The formal review and practical work portion clarified the general requirements of the formal review, including detailing form review work standards of registration, objection, appraisal, withdrawal and other formal review standards of trademark business. It stipulated the classification of goods and services, textual search elements, graphic elements and other search elements. It clarified the review criteria for trademark renewal, change, transfer and other procedures, illustrated the Madrid trademark international registration application, opposition and follow-up business and other business review standards. And in the section of practical work, trademark fees, document delivery, trademark files, trademark announcements, etc. were regulated.
New chapters on the overview, examination and trial standards of Article 4 of the Trademark Law have been added into the substantive standards for examination and trial, in which the principles, scope and basic concepts of trademark examination and trial part were stipulated. They clarified the applicable elements, considerations and applicable circumstances of malicious trademark registration applications not for the purpose of use (i.e., Article 4 of the Trademark Law), improved the standards for the application of relevant provisions of the Trademark Law, including the applicable circumstances of the provisions on prohibition of use and prohibition of registration, the criteria and considerations for the determination of trademark identity and similarity, and the criteria for the determination of distinctiveness of three-dimensional marks, color combinations and sound trademarks. They clarified the standard implementation of consistent and case-by-case review of the combination of practice requirements and explained different standards for reviewing applications for consideration of special circumstances. The guidance cases and illustrations were added to explicate the application of relevant provisions and enhance the certainty of the guidelines.
Adapted from the CNIPA