During the COVID-19 pandemic, the Trademark Office of the State Intellectual Property Office (SIPO) has issued a series of measures in response.
To protect the lawful rights and interests of parties affected by the pandemic, the SIPO issued the Announcement on Matters Associated with Relevant Deadlines for Patents, Trademarks and Integrated Circuit Layout Designs That Are Affected by the Pandemic (No. 350) on 28 January 2020, specifying the relief procedures for parties that miss deadlines for the handling of various patent, trademark and integrated circuit design-related matters due to the effects of the pandemic.
The announcement states that, “If a party misses a deadline specified in the Trademark Law or its implementing regulations, or a deadline set by the State Intellectual Property Office due to a reason relating to the pandemic, making it impossible for such party to handle a relevant trademark matter in a normal manner, the relevant deadline shall be tolled from the date on which the obstacle to exercising the right arose, and resume counting once such obstacle is removed, unless otherwise provided in law. If the obstacle to exercising the right results in the party losing its trademark rights, it may submit a written application within two months from the date on which the obstacle was eliminated, explaining the reason and presenting the appropriate supporting documentation, and request restoration of his rights.”
The above-mentioned announcement applies to all parties from countries and regions affected by the pandemic.
On 6 February 2020, the SIPO issued answers to questions regarding trademark matters for which applicable periods can be tolled, the date on which an obstacle to the exercise of rights arises, the date on which the obstacle to the exercise of rights is eliminated, applications for the tolling of periods and the required supporting documentation, restoration of trademark rights that could not be renewed due to the pandemic, and other matters touched upon in announcement No. 350.
For example, the trademark matters for which applicable periods can be tolled refer to such trademark matters as “corrections, responses to examination opinions, payment of charges, responses to same-day applications for the provision of evidence of use and consultations, provision of evidence of use in connection with the cancellation of registered trademarks for failure to use the same for three years in succession, oppositions, reviews of rejections, reviews of refusals of registration, reviews of invalidations, withdrawals of applications for review, responses, supplementation of evidence, as well as requests for responses to invalidations, supplementation of evidence, etc.”
Furthermore, the various departments of the Trademark Office and the Examination Co-ordination Centre have been using a combination of “teleworking” and “in-person work” from January to date, to operate normally. During the first quarter of 2020, substantive examinations for 1,090,000 trademark registration applications were completed, with the average time required for an examination staying steady at less than 4.5 months, ensuring the normal handling of the relevant cases and matters of all trademark-related parties.
Support of registrations
The Ten Provisions of the State Administration for Market Regulation, the National Medical Products Administration and the State Intellectual Property Office to Support the Resumption of Work and Production, officially issued on 15 February, provide that, upon request, patent filings and trademark registrations relating to the prevention and treatment of COVID-19 will be accorded priority in examination and handling.
The provisions support enterprises in seeking financing secured by pledges of intellectual property (IP), establishing a green channel for the registration of pledges of IP, and supporting expedited financing and loan renewal by enterprises to ease funding difficulties.
With a view to supporting relevant enterprises in applying for the registration of trademarks for pandemic prevention and control-related goods and services, on 18 February, the SIPO published the Work Plan for the Expedited Examination of Applications for the Registration of Pandemic Prevention and Control-Related Trademarks.
To date, there has already been a number of market entities that have submitted expedited examination requests via the provincial-level market regulation authorities and IP authorities. For example, the trademark “长生鸟fenix” (pronounced chang sheng niao), the registration of which, for such goods as “germicides, sterilizing preparations and hand sanitizers” in Class 5, was applied for by Zhejiang Fenix Pharmaceutical (a key Zhejiang provincial-level pandemic prevention and control enterprise) by way of the expedited examination procedure, only required 21 days from the registration application, on 14 February 2020, to gazetting of the preliminary approval, on 6 March 2020.
Crackdown on irregular acts
On 7 February, the Trademark Office issued the Guiding Opinions for the Examination of Pandemic Prevention and Control-Related Trademarks, setting out guiding opinions on the examination of marks – relating to the names of persons associated with the pandemic, containing the name of the pandemic virus or the name of a disease, pandemic-related pharmaceutical marks, protective product-related marks, other pandemic-related marks, etc. – and specifying that irregular trademark registration-related acts will be cracked down upon hard and fast, in accordance with the law.
On 27 February, the Trademark Office issued the notice on “stringently cracking down on bad-faith acts of applying for the registration of pandemic-related trademarks”. The notice states that the Trademark Office has implemented controls on close to 1,000 applications for the registration of COVID-19 pandemic-related trademarks such as “Huoshenshan” and “Leishenshan” (the names of two makeshift Wuhan hospitals built to respond to the pandemic).
Subsequently, the Trademark Office issued announcements on several occasions, rejecting in one fell swoop numerous bad-faith acts of applying for pandemic-related trademarks on the grounds of their “having an adverse impact”, or other legal basis.
On 6 March, the General Office of the SIPO issued the Notice on Stringently Cracking Down on Irregular Acts of Acting as Agent in the Application for COVID-19 Pandemic-Related Trademarks, emphasizing that, “henceforth, monitoring inspections of agents and irregular acts of applying for the registration of pandemic prevention and control-related trademarks will continue to be intensified”.
On 11 March, a Beijing agency acting as agent in the application for the registration of a series of “Huoshenshan” trademarks was dealt the maximum fine of RMB100,000 (US$14,000).
Claire Zhao is head of the trademark department and an attorney at Sanyou Intellectual Property Agency
Sanyou Intellectual Property Agency
16/F, Block A, Corporate Square
No.35 Jinrong Street, Beijing 100033, China
Tel: +86 10 8809 1921 / 8809 1922
Fax: +86 10 8809 1920