The National Intellectual Property Administration, PRC (“CNIPA”) examines the international registrations on both absolute and relative grounds.

    The time limit for the CNIPA to issue provisional refusal is 12 or 18 months from “Date of recording (date of notification from which the time limit to notify the refusal starts)” indicated in the MONITOR of the online data base of WIPO.  Specifically, the time limit to issue an ex officio refusal is nonetheless 12 months if the Office of the holder is in the country which is also a member of both Madrid Agreement and Madrid Protocol.  While the time limit is 18 months if the Office of the country of the holder is member of the Protocol only.

    The time limit to respond to ex officio provisional refusal is 15 days from the date the holder receives the notification of provisional refusal from WIPO.  When the date of receipt of the notification is illegible or absent, the request for review of refusal may be presented within a period of 30 days from the date where the notification was sent by WIPO to the holder (the receipt date of the notification under this circumstance will be deemed as 15 days after the date of notification by the WIPO to the holder).  The time limit cannot be extended but there will be a 3 month supplementary filing period after filing the initial request.

    The holder must appoint a local representative to respond to a provisional refusal.  On a separate note, for national trademark applications, recording a local Chinese trademark agency before the CNIPA is an efficient way to ensure that the notifications could be received safely.  However, recording a local Chinese trademark agency for an international registration is not available.  The holder of the international registration must appoint a local representative when there is a case to be dealt with in China.  Most of the notifications, such as notification of ex officio provisional refusal, notification of opposition, and etc., are sent to the holder through WIPO, and the notification of submitting use evidence in a non-use cancellation action is sent to the representative recorded for the international registration before WIPO or the holder if there is no representative directly.  It is important that the contact information recorded before WIPO is accurately updated so as not to miss any notifications.

    The substantial examination for both international registrations and national applications are the same.

    The provisional refusal against an international registration based on relative ground cannot be overcome by narrowing the descriptions of a particular goods or services through WIPO.  China adopts subclass system.  The goods or services after narrowing or limitation will still be classified into the same subclasses and therefore the goods or services will still be considered similar.

    It happens occasionally that the descriptions of goods and services may not be properly classified into the right subclasses by the CNIPA due to a different interpretation of the descriptions and therefore wrong marks may be cited.  Under such circumstance, the holder may 1) file a correction application before the CNIPA, requesting the CNIPA to reconsider the classification of the goods or service and classify them into the proper subclasses, and in the meanwhile, 2) file the review of refusal before the CNIPA to keep the international registration alive over the rejected goods or services, and request for a suspension examination of the international registration until the CNIPA’s feedback for the request to correct the classification of the goods or services.

    Partial provisional refusals, i.e., refusal of some classes or some particular goods and services in the international registration can be issued.  If the holder decides to abandon the international registration over the partially rejected goods or services, the holder does not need to do anything; no need to respond to the notification of refusal.  The rejected goods or services will be deleted from the international registration automatically.

    Holders must appoint a local representative to respond to a provisional refusal.  Information about local representatives can be obtained from the CNIPA’s website.  Our firm, Kangxin Partners, P.C. (http://en.kangxin.com), providing comprehensive IP services, is glad to assist you.  Please feel free to contact me at jane.chen@kangxin.com for any inquires or questions.

    This is part four of a series of articles on the topic of international registrations designating China.  More articles will be available soon.