The amended Trademark Law and its implementing regulations took effect on May 1, 2014. This article outlines principal changes affecting applicants.
1. Sound-mark applications
An applicant must state in the application that the mark is a sound mark, explain how it will be used, and submit a sound sample meeting the requirements. The sound should be described using staff or numbered musical notation together with a written explanation. If musical notation cannot describe it, a written description must be provided. The description must correspond to the sample.
2. Electronic submissions and dates of filing and service
The 2013 Trademark Law permits applications in writing or by electronic data message. The implementing regulations define the latter as submitting trademark applications and related documents through the internet.
For documents submitted electronically to the Trademark Office or the Trademark Review and Adjudication Board, the filing date is the date of receipt by the relevant electronic system. Documents served electronically on a party are deemed served 15 days after dispatch.
3. Division of trademark applications
The amended law introduced applications covering multiple classes. Where the Trademark Office rejects an application for only some designated goods, the applicant may divide the preliminarily approved portion into a separate application. The divided application retains the original filing date.
4. Documents submitted through non-postal courier services
The previous law and regulations did not clearly establish the filing date for documents sent through courier companies other than postal operators. Except for the filing date of a trademark registration application itself, the amended regulations treat the date on which the courier accepts the documents as the submission date. A trademark registration application's filing date remains the date on which the Trademark Office actually receives it.
5. Opposition procedures
To implement the new opposition system, the regulations specify acceptance requirements and grounds for refusing to accept an opposition. A decision refusing registration may concern only some goods.
Evidence submitted after the prescribed deadline may be considered if it arose after that deadline or there was another justified reason for not submitting it in time. The opposing party must first be given an opportunity to examine and respond to it.
6. Recordal of trademark licences
Previously, the licensor had to submit a copy of the licence agreement for recordal within three months after signing. The amended regulations replace recordal of the agreement with recordal of the licence, so the agreement itself need not be submitted. The three-month deadline is also removed: the relevant recordal materials must instead be filed during the licence agreement's validity period.
