1. What is “the same-day applications”?
According to Article 19 of Regulations for the Implementation of the Trademark Law of China, “the same-day applications” means that two or more applicants respectively apply for the registration of identical or similar trademarks used on the identical or similar goods/ service on the same day.
2. How to handle “the same-day applications” in CNIPA?
Also according to the above-mentioned Article 19, the Trademark Office will handle “the same-day applications” by the following three stages.
(Stage 1) Submitting evidence of use The Trademark Office will send each applicant the Notice of Supplementary Submission of Evidence of Trademark Use and provide the detailed information of all trademarks filed on the same day. Each applicant shall provide the original or notarized copy of the evidence of trademark use before the date of application on the designated goods/service within 30 days upon receiving the notice.
If both applicants submit effective evidence of use, the applicant will be determined based on the earlier date of use. While, if one applicant submits effective evidence of use and the other applicant does not or the evidence is invalid, the party submitting effective evidence shall be determined as the applicant. If the applicants used the marks for the first time on the same day or none of them has used the mark, the Trademark Office will proceed to the next "consultation" stage.
(Stage 2) Consultation
The Trademark Office will issue the Notice of Consultation for the Same-day Applications informing the applicants to commence consultation on their own to retain one applicant's application for trademark registration on the same or similar goods/service, and submit a written agreement to the Trademark Office within 30 days from the date of receiving the notice. If no written agreement is submitted within the prescribed time limit or the agreement is invalid, the consultation shall be deemed unsuccessful, and the Trademark Office will proceed to the next "drawing lots" stage to determine the applicant of the mark.
(Stage 3) Drawing lots
The Trademark Office will issue the Notice of Draw to all the applicants informing the relevant information of the draw such as the time, place, and necessary materials and so on. The party who fails to participate in the draw on time or fails to provide complete materials shall be deemed to have abandoned the application. Currently due to the epidemic situation of COVID-19, this step is carried out online, the whole process of which is supervised by notaries on site. The result of draw will be informed to all applicants on the spot and a corresponding notarized certificate will be issued later. 3. Suggestion on “the same-day applications” The general suggestion is to actively participate in the whole process according to the above procedures of the Trademark Office.
In the first stage of “Submitting the evidence of use”, the applicants are advised to actively look for the evidence of prior use to submit and make sure the evidences meet three requirements at the same time: (1) the trademark should be used before the date of application; (2) the trademark should be used on the designated goods/service; (3) the used mark should be the one filed for application.
In the second stage of “Consultation”, the applicants are advised to actively consult with each other and reach an agreement with or without compensation according to respective needs based on the principle of equality and voluntariness.
In the third stage of “Drawing lots”, the applicants are advised to prepare the necessary materials and participate in the draw on time.
