Concern over new Trademark Office requirements for application forms

China
The China Trademark Office has published new requirements regarding the completion of application forms, which are due to take effect on July 1 2010. Under the new requirements, foreign trademark applicants should not wait until the last minute to give instructions, but should allow more time in order to meet priority and opposition deadlines.

One of the new requirements is that application forms for trademark registration and opposition proceedings must be signed by the applicant, even if the latter has engaged an agent to handle the application on its behalf. This means that foreign applicants must give instructions to their agents in good time before the deadline, so that forms can be completed and sent to the applicants to be signed, and then sent back to the agents to be filed. 

Practitioners are now in discussion with the Trademark Office to ascertain whether it will be possible to file a faxed or scanned copy of the signed application or opposition form to meet the deadline, and then submit the form bearing the applicant’s original signature within a stipulated period to perfect the filing. So far, the Trademark Office has not given an answer.

Another new requirement is that the name and address of the applicant must be identical to the name and address set forth in the identity or incorporation document filed together with the application. This raises several questions, including the following:

  • Are foreign applicants required to submit identity or incorporation documents?
  • Will minor discrepancies (eg, 'Ltd' instead of 'Limited' or 'Corp' instead of 'Corporation') be acceptable?
If the answer is negative, foreign applicants that have used abbreviations in earlier applications or registrations may need to update the official records. Further, some applicants might have used their business address in earlier applications or registrations, rather than the registered office address appearing in the incorporation documents. If the official records are not corrected, will the Trademark Office treat those applications or registrations as belonging to a third party and raise a citation against later applications filed by the original applicant? Practitioners have also put these questions to the Trademark Office and are currently awaiting answers.
 
Rebecca Lo, Rebecca Lo & Co, Hong Kong

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