• Professional News
  • 02 October 2014

New guidance clarifies the procedure for dividing partially rejected trademark applications in China

The China Trademark Office (CTMO) has published guidance clarifying the procedure for division of partially rejected trademark applications.

On 1 May 2014, the new Chinese trademarks act came into force, so the CTMO is now processing trademark applications filed under the new trademarks act.

The act has introduced a new procedure in respect of trademark applications for which registration is partially rejected by the CTMO.  The new guidance clarifies this procedure.

Application in two parts
According to the new rules, the trademark applicant may choose to divide his trademark application into two parts, consisting of the part that is approved for registration by the CTMO and the part that is rejected by the CTMO, respectively.

This division of the trademark application makes it possible for the approved part of the application to be published, whereas the part of the application that is rejected for registration can be submitted to TRAB (the appeals board) for re-examination.

The application date remains the same for both parts of the divided application.

Clarification needed
Before the CTMO published its guidance on 20 August 2014, the scope for division of trademark applications was unclear.

For instance, it was not quite clear whether it was possible to divide applications within a single class. Nor was it clear at what stage during the processing of a trademark application division could be requested.

CTMO's guidance seeks to clarify these uncertainties

The procedure
The procedure applicable to partially rejected trademark applications is specified as follows:

  • When the CTMO notifies an applicant that a trademark application has been partially rejected, an application form for division of the application is provided at the same time.
  • The applicant then has 15 days in which to file an application for division of the trademark application with the CTMO.
  • Subsequently, the CTMO divides the application into two parts: the part approved for registration and the part rejected for registration. The approved part of the application is given a new application number, after which that part of the application is published. The rejected part of the application retains the original application number and can then be submitted to TRAB for re-examination.

Further clarification
The new guidance provides further clarification: 

  • Although it does not appear specifically from the guidance on the new trademarks act, the procedure for division of a trademark application applies to applications for a single class of goods as well as to multiple-class applications.
  • Division of an application can only be made at the time when the CTMO partially rejects the application. The application cannot be divided in the event of opposition against individual classes in a multiple-class application.
  • An application for division of a trademark application cannot be withdrawn.
  • The procedure for division of trademark applications does not apply to international trademark applications in which China is designated. This is of importance for deciding whether the Madrid system should be used when applying for registration in China.

For further information, please contact Claus Barrett Christiansen, partner and member of Bech-Bruun's Chinese Desk, at clb@bechbruun.com  or Anne Skovfoged Meldgaard, junior associate, at aem@bechbruun.com.

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