If you’re reading this article, you will have received a notification of provisional refusal by a pre-registered Chinese or American TM holder who thinks your international trademark application is infringing on their IP rights. Here, we will go over the existing procedures to go against such a notification and fight to protect your IP in China and the United States.
If you need help with your trademark we have a trademark attorney with years of experience who can help you.
Provisional Refusals | Pre-registered Chinese TM
The People’s Republic of China is not necessarily renowned for their protection of IP – in fact, more than 70% of all counterfeited goods in trade are estimated to come from China, which accounts for around 12.5% of their goods exported and 1.5% of their GDP. Nonetheless, the Chinese market is gigantic and is an obvious target for many growing companies. Fortunately, they are signatories to the Madrid Protocol and there are certain mechanisms to protect trademarks in China. The most relevant national law to be aware of is the Chinese Trademark Law, and the relevant national TM office is the Chinese National Intellectual Property Administration (CNIPA), or Chinese Trademark Office.
Notice of opposition
Regarding the procedure, once the international trademark application has been published in the WIPO International TM Gazette, any pre-existing trademark holder may file a notice of opposition within 3 months, starting from one month after the publication date. There will be a further 3-month period to submit relevant documentation.
Once the applicant has received the notification of provisional refusal, they then have 30 days to respond to the opposition. At this point, the applicant must appoint a local representative in order to respond to the opposition. The applicant will also have a 3-month period in order to submit all other documentation relevant to their claim.
It is of utmost importance to understand that the opposition and the response to the opposition shall be the official legal claims of both parties and shall be reviewed by the CNIPA once all documentation has been submitted. These claims should be well-drafted with a coherent structure and a strong legal basis if you are hoping to have the best chances possible to receive a favorable outcome from the Chinese Trademark Office.
We should also take note of the ex officio refusal by the Chinese Trademark Office itself, where they have 12 months to exercise their right of refusal (in some cases 18 months). In this scenario, the trademark applicant will have 15 days to respond to the notice from the date of receipt, where the application shall be returned to the adjudication board of the Chinese Trademark Office for a second review. The CNIPA will then have 9 months to review the application again and will respond to the applicant in writing, declaring their final decision.
If the applicant, either under ex officio provisional refusal or through refusal by opposition, receives a final decision that is unfavorable, they will have 30 days to appeal the decision of the Chinese Trademark Office to the national courts of China. Again, it cannot be understated, to convince a judge that the national trademark office made the wrong decision will require a strong legal argument, something which only experienced IP lawyers can be trusted to construct.
If you would like help relating to an IP matter in China, feel free to get in touch with us.
Provisional Refusals | Pre-registered US TM
Given that the USA is home to some of the largest companies in the world, as well as being the world’s largest economy, it would be no surprise to find a growing company looking to protect their IP in the United States. The key piece of legislation to be aware of is the Trademark Act, and the relevant TM office is the US Patents and Trademarks Office (USPTO).
Notice of Opposition
Once the trademark application is received by the USPTO, and once provisionally approved by the Director, the application will be published in the Official Gazette of the USPTO. From that date, any pre-registered TM holders may file an opposition to the application within 30 days if they believe that the applicant’s new trademark would infringe on their own. This time period may be extended if requested in writing to the Director.
If this notice of opposition is accepted by the USPTO, they will notify the applicant and shall set up a Trademark Trial and Appeal Board in order to come to a final decision on the matter. The Board shall issue an institution order, which is a document that outlines the details of the opposition procedure. This shall be done electronically, and will typically set out a time frame of 40 days for the applicant to respond to the opposition, 6 months for discovery, and then the periods in which the parties can make their testimony – 30 days for the opponent, 30 days for the applicant, and 15 days for the opponent’s rebuttal.
In the applicant’s response to the opposition, they must clearly outline the legal basis for their claim as to why their trademark should be accepted. As stressed previously, it is essential that all arguments submitted to the Board must be based on strong, coherent legal claims – it would be highly recommended hiring an experienced IP lawyer for this.
Once the applicant has answered the opposition, the Discovery period begins, in which both parties may request and receive relevant information and documentation from the counterparty, including written interrogatories, document requests, depositions, and requests for admissions.
At the end of the discovery period, the final stages of the opposition proceedings shall begin. This entails the submission of briefs – mandatory for the opponent, optional (but recommended) for the applicant – which outline each party’s claims. If one of the parties requests an oral hearing, this shall be arranged, however, it should be noted that these hearing are of a summary nature – that is to say, no new evidence may be submitted, only a summary of both parties’ claims. It is common for judges to take advantage of these hearings to clarify aspects of the case that were not entirely clear in the briefs. Once finalized, the Board will make a decision regarding the admissibility of the international trademark application.
If unfavorable, either party may request a rehearing, reconsideration or modification of a decision within 1 month of the date of the decision. If unsuccessful, the losing party can still appeal to either the US Court of Appeals or it can request a brand-new trial in a District Court. A key difference between the two is the ability to introduce new evidence to the case – in the Court of Appeals, no new evidence or arguments may be submitted; in the District Courts, however, it is much more flexible and allows for the introduction of new evidence and arguments.
The US system for registering trademarks can oftentimes seem rather difficult, and just by looking at the law it can still seem unclear as to what path you should take. For any doubts, get in touch with us, and we would be happy to put your mind at ease.Read More
Patents granted in 2019 by USPTO
The USPTO granted a record of 333,530 patents in 2019, this represents a 15% increase with respect to 2018.
As with the previous 27 years, IBM has continued to hold on to the top spot for patents granted, with 9,262 in total for the year, whereas Samsung Electronics at 6,469 is second.
In terms of technology trends, medical and biotechnology are the fastest growing technical fields, with hybrid plant creation topping the list of trending technology, followed by CRISPR gene-editing technology, and then medicinal preparations (led by cancer therapies).
Other technical fields with substantial growth are Mobility, such as dashboards and other car-related inventions, quantum computing and 3-D printing.
US companies account for 49% of U.S. patents granted in 2019 up from 46 percent a year before. Japan accounts for 16% to be the second-largest, third place for South Korea at 7% (Samsung carrying a big part of that), and China (thanks to Huawei) passing Germany to be at number four with 5%.
20 top companies
The top 20 companies in terms of U.S. granted patents in 2019 are the following:
- International Business Machines: 9262
- Samsung Electronics: 6469
- Canon: 3548
- Microsoft: 3081
- Intel: 3020
- LG Electronics: 2805
- Apple: 2490
- Ford: 2468
- Amazon: 2427
- Huawei: 2418
- Qualcomm: 2348
- Taiwan Semiconductor Manufacturing: 2331
- BOE Technology Group: 2177
- Sony: 2142
- Google: 2102
- Toyota Motor Corp 2034
- Samsung Display: 1946
- General Electric: 1818
- Telefonaktiebolaget LM Ericsson:1607
- Hyundai Motor: 1504
by Marta Garcia
In September 2018, Maximiliano Santa Cruz, the former Director of the National Institute of Industrial Property of Chile (INAPI), and the Director of the United States Patent and Trademark Office (USPTO) signed a Memorandum of Understanding in Geneva to start a Patent Prosecution Highway (PPH) Pilot program between the two countries.
The PPH pilot program, which was launched on November 1, 2018, will last for three years and may be extended upon agreement between the parties.
Under the PPH program, participating patent offices agree that when an applicant receives a final decision from a first patent office concluding that at least one claim is allowed, the applicant may request expedited examination for the corresponding claim(s) in a corresponding patent application that is pending in a second patent office.
The PPH agreement between the INAPI and the USPTO includes the PPH-Mottainai and PCT-PPH modalities. The PPH-Mottainai modality eliminates the Office of First Filing (OFF) to Office of Second Filing (OSF) directional requirement of the PPH model. This flexible approach enables the examination results by the INAPI or the USPTO to be used as the basis for a PPH request irrespective of which one was the office of first filing.
According to the PCT-PPH modality, an applicant may request accelerated examination based on a written opinion or examination report for a corresponding PCT application prepared by an International Search Authority indicating that at least one claim has novelty, inventive step, and industrial applicability.
This is the most recent PPH pilot program that the INAPI has entered, after those with the Canadian Intellectual Property Office (CIPO), the Japanese Patent Office (JPO), the State Intellectual Property Office People’s Republic of China (SIPO) and the patent offices of the Pacific Alliance members (Colombia, Mexico and Peru), as well as PROSUR members (Argentina, Brazil, Colombia, Costa Rica, Ecuador, Paraguay, Peru and Uruguay), which are already up and running.
Source: www.inapi.clRead More