The same-day trademark applications refers to separate applications filed by two or more trademark applicants on the same day for registration of the same or similar trademarks on the same or similar goods before the Trademark Office. As China adopts the first-to-file principle in trademark registration, special rules need to be put in place to regulate circumstances where trademark applications are filed on the same day. This article aims to analyze insufficiencies in the current examination procedure for trademark applications on the same day and make recommendations for an independent procedure.

 

 

 

In 1982, China enacted its first Trademark Law, Article 18 of which provided “Where two or more applicants file separate applications on the same day for registration of the same or similar trademarks to be used on the same or similar goods, the trademark filed first shall be preliminarily approved and published. Where the applications are filed on the same day, the trademark which has been used earlier shall be preliminarily approved and published, and the other trademark shall be rejected and shall not be published.” Article 5 of the Implementing Regulations for the Trademark Law, promulgated in 1983, provided, “Where two or more applicants file separate applications on the same day for registration of the same trademark or similar trademarks to be used on the same or similar goods, each applicant shall, in accordance with a notification from the Trademark Office, submit evidence of the first use of such trademarks within the prescribed time limit. If the first uses are on the same day or none of the applicants have used the trademarks, the applicants shall commence consultation; in the event that they are unwilling to reach an agreement within 30 days of the consultation, the Trademark Office shall make a decision.” In 1988, the first amendment to the implementing regulations did not make any modification to the above provision.

 

 

In 1993, China made its first amendment to the Trademark Law with Article 18 unchanged in respect of the same-day trademark applications. However, the Implementing Regulations for the Trademark Law, revised in 1993, made some revisions to Article 5 of its 1983 predecessor. Pursuant to Article 13 of the 1993 implementing regulations: Where two or more applicants file separate applications on the same day for registration of the same trademark or similar trademarks to be used on the same or similar goods, each applicant shall, within 30 days of receiving a notice from the Trademark Office, submit evidence of the first use of such trademarks. If the first uses are on the same day or none of the applicants have used the trademark, the applicants may commence consultation and submit a written agreement to the Trademark Office within 30 days; in the event that they fail to reach an agreement within 30 days, the applicants shall participate in a draw presided over by the Trademark Office, or the Trademark Office may make a decision.

 

Based on the above, the revised same day application procedure defined, for the first time, the time limit of submitting evidence of use, and meanwhile added a new method of obtaining the trademark application right by drawing lots. The relevant provisions remained unchanged after the revisions of the Implementing Regulations for the Trademark Law in 1995 and 1999.

 

 

Article 29 of the current China Trademark Law provides, “Where two or more applicants apply for registration of the same trademark or similar trademarks for use on the same or similar goods, the trademark application that is filed first shall be preliminarily approved, accompanied by a publication thereon. If the applications are filed on the same day, the trademark that is used first shall be preliminarily approved, accompanied by a publication thereon, and the application(s) of the other applicant(s) shall be rejected and no publication shall be made.”

 

Article 19 of the Implementing Regulations for the Trademark Law provides, “Where two or more applicants file separate applications on the same day for registration of the same trademark or similar trademarks to be used on the same or similar goods, each applicant shall, within 30 days of receiving a notice from the Trademark Office, submit evidence of the first use of such trademark. If the first uses are on the same day or none of the applicants have used the trademarks, the applicants may, at their own discretion, commence consultation within 30 days of receiving the notice from the Trademark Office and submit a written agreement to the Trademark Office; in the event that they are unwilling to conduct consultation or the consultation fails, the Trademark Office shall notify all the applicants to determine one applicant from among them by drawing lots, and shall dismiss registration applications filed by others. Where any of the applicants fails to participate in the draw after the Trademark Office has notified them, the application filed by that applicant shall be deemed to have been abandoned, in which case the Trademark Office shall issue a written notification to the applicant that has not participated in the draw.”

 

Abolition of the administrative adjudication right of the Trademark Office is one of the most significant changes made in the current Implementing Regulations for the Trademark Law. In other words, where the trademark applicants fail in consultation, they shall draw lots to determine the trademark application right instead of relying on adjudication from the Trademark Office. Meanwhile, the regulations also adopt an approach to handle circumstances where the applicants fail to participate in the draw, further improving the draw procedure and enhancing workability.

 

The trademark administrative department, on the basis of the above laws and regulations, promulgated in 2006 the Examination Procedure for Same-day Trademark Applications which detailed and improved the Examination Procedure.

 

 

If a trademark application complies with conditions of acceptance, the Trademark Office will make a decision of acceptance. Upon acceptance of an application case, the examiner of the examination department will make a substantive examination to determine whether there are absolute or relative reasons to reject the application. In the substantive examination, the examiner will search for previously registered and applied trademarks, therefore, the same-day applications will be discovered in the substantive examination. In cases of same-day applications, the examiner will proceed to examine registrability of the trademarks. If the examiner finds absolute or relative reasons to reject the trademarks, the examiner will directly reject the applications and will no longer make a comparison as to the first-use time of the trademarks. If the examiner finds no circumstances for rejection, the examiner will proceed into the Examination Procedure.

 

 

Pursuant to Substantive Examination Procedure for Same-day Trademark Applications, if it is determined that there are circumstances of same-day trademark applications, the Trademark Office will issue a “notification of supplementary submission of evidence of use” and request each applicant to submit evidence of prior use within 30 days. Each applicant shall submit effective evidence of use within the legally prescribed time limit. If the uses don't fall on the same day, the Trademark Office will preliminarily approve and publish the trademark which has been used earlier, and reject or partly reject other applications. Where one applicant fails to produce, or fails to produce within the legally prescribed time limit, effective evidence of use, while the other applicant submits effective evidence of use, the Trademark Office will preliminarily approve and publish the trademark which has been effectively used, and reject or partly reject applications of trademarks which have not been used.

 

 

If all the applicants fail to provide evidence of use or the submission is ineffective, or the evidence shows the trademarks have been used on the same day, the Trademark Office will issue a “notification of consultation for the same-day trademark applications”, informing them to commence consultation at their discretion and submit a written agreement within 30 days. The Trademark Office will, according to the written agreement, make a preliminary approval and a publication thereon, or decide to reject or partly reject trademark applications. Where no written agreement is submitted within the prescribed time limit or the agreement is void, the consultation is deemed to have failed.

 

 

If the applicants fail to reach an agreement, a draw will ensue. The Trademark Office will then notify the applicants to draw lots within a time limit and make a preliminary approval pursuant to the result of the draw. The Trademark Office will issue a “notification of draw” and “instructions of draw” to the applicants, advising on the time, place of the draw and required submissions. The applicants may apply for notarization of the draw if they think fit, and bear the notarization fees incurred. If the Trademark Office thinks fit and have the draw notarized, the notarization fees shall be borne by the Trademark Office.

 

 

In practice, the Examination Procedure mainly has the following insufficiencies:

 

First, the examination procedure for the trademark registration requirements and the Examination Procedure have been integrated into one, leading to insufficient remedial rights for the applicants in the follow-up procedures. As a matter of fact, the two procedures are quite different in the examination objects and procedural nature, thus they should not be confused. The Requirement Procedure is an administrative granting of rights, similar to the administrative licensing, thus only unilateral administrative counterparties exist and the examination object is registrability of trademarks. The examination of evidence of use for the same-day trademark applications involves bilateral administrative counterparties, and the administrative department acts as a neutral judge whose judgment belongs to the administrative adjudication, and the examination object is qualification of entry into the next stage substantive examination procedure.

 

Under circumstances where the two procedures are integrated into one, if a party is dissatisfied with the decision of the Trademark Office over rejection of the same-day trademark applications, the party may file an application for a review of the rejection. However, the Trademark Review and Adjudication Board (TRAB) is unable to provide effective relief to the party in the review because other trademark applicants are not parties to the review. For example, it is possible that Company A and Company B could separately file for the same trademark applications separately on the same day before the Trademark Office. The Trademark Office may, after examination, decide to preliminarily approve the application of Company A on the ground of its previous use, and reject the trademark application of Company B. If Company B is able to prove its earlier use and files an application for review, Company A will not be able to present opinions over tenability of grounds of Company B because Company A is not a party to the procedure. Furthermore, Company A’s evidence of use will not appear in the documents for the procedure, making the TRAB unable to compare their time of use. In this case, Company B is entitled to the sole remedial right of filing a review for rejection pursuant to the Administrative Reconsideration Law and the Trademark Law. However, in practice, the review is based on the one-party regime, and thus is unable to provide effective relief to the parties.

 

Second, as regards the order of examination, the Requirement Procedure precedes the Examination Procedure, causing inconsistency with the follow-up examination procedure for rejection. The reason for the arrangement partly lies in the fact that whether a trademark application belongs to the same-day applications will only be discovered in the course of the substantive examination procedure, and more importantly in the fact that the Trademark Law expressly provides, “If the applications are filed on the same day, the Trademark Office will preliminarily approve and publish the trademark which has been used earlier.” The provision means that the Examination Procedure is not to determine which trademark can go into the follow-up Requirement Procedure, but to definitely conclude whether the trademark shall be preliminarily approved. As a result, it is not surprising to see circumstances where the Requirement Procedure precedes the Examination Procedure.

 

In practice, if the Requirement Procedure precedes the Examination Procedure, the follow-up examination stages may encounter difficulties. One example would be if both Company A and Company B file the same trademark applications separately before the Trademark Office on the same day, which, after examination, rules that both companies have violated Article 28 of the Trademark Law and rejects their applications on the ground of similarity with previously filed registered trademarks. Both companies would foreseeably be dissatisfied with the rejection and file applications for review. If the TRAB finds for the grounds of review and rules that the applied trademarks are not similar to the cited trademarks, the TRAB will not be able to preliminarily approve or reject the two applied trademarks, even though the grounds for review are tenable. Furthermore, the TRAB is not able to remand the case to the Trademark Office either. Therefore, under such circumstances, cases of review for rejection will face procedural difficulties.

 

Third, in the Examination Procedure the Trademark Office will compare submissions of evidence of use to determine earlier use. However, the Substantive Examination Procedure for same-day trademark applications does not encompass provisions enabling entry of the parties into the procedure to exchange evidence and make presentations. The result of earlier or later use of trademarks is closely related to the interests of trademark applicants; however, they are completely excluded from the procedure. This arrangement properly enhances the efficiency of the administrative work, but it potentially violates the principle of public participation in the administrative procedural rules. Since one party is denied the right to examine evidence of use submitted by the other party and present opinions, the party whose later use has been determined will not be fully satisfied, even if the Trademark Office is just and equitable in its ruling. Therefore, it is regrettable that the current arrangement lacks a fair procedure to ensure just and substantive results.

 

 

Regarding the preceding problems, this author believes that the Examination Procedure should take an independent road for improvement, the details of which are as follows:

 

 

Article 29 of China’s Trademark Law provides, “Where two or more applicants apply for registration of the same trademark or a similar trademark for use on the same or similar goods, the trademark application that is filed first shall be preliminarily approved, accompanied by a publication thereon. If the applications are filed on the same day, the trademark that is used first shall be preliminarily approved, accompanied by a publication thereon, and the application(s) of the other applicant(s) shall be rejected and no publication shall be made.” The article puts the Requirement Procedure and the Examination Procedure in one single provision, thus the author suggests that future Trademark Law revisions put the two procedures into separate articles to establish an independent Examination Procedure.

 

To this end, the legislative experience in Taiwan is a good reference. Before the 2003 revision of Trademark Act in Taiwan, the same legislative pattern was adopted on the island as the Chinese mainland. The 2003 revision expressly drew a line between the Requirement Procedure and the Examination Procedure, making the latter independent. Article 18 of the act provides: A compromise shall be reached between two or more applicants, whose trademark applications submitted separately on the same day of which time precedence cannot be determined may likely cause confusion to relevant consumers by providing the same or similar trademark representations and designating their use on the same or similar goods or services. Lots shall be cast where a compromise has failed to be reached. The determination via consultation or draw means determination of application qualifications or application order according to results of the draw, and excludes determination of registrability of trademarks.

 

 

If the Examination Procedure has been independent, its result will determine which trademark application may proceed into the procedure of substantive trademark examinations, therefore, it should be a preceding stage for the Requirement Procedure. When the result of the Examination Procedure takes effect, the Trademark Office will move on to the substantive examination. After reaching a conclusion over the Examination Procedure, the Trademark Office will notify each applicant in writing. If the parties are dissatisfied with the conclusion, they may file an application for an administrative reconsideration and will no longer seek remedies through the trademark examination procedure. In either the administrative reconsideration or the administrative litigation, each applicant may qualify as a party. In this way, their rights to seek remedies may be fully guaranteed; the trademark examination procedure may also avoid the embarrassing situations in adjudication of such cases.

 

 

In the Examination Procedure, examination of evidence of use is an important process in which each trademark applicant is in an adversarial position due to conflicts of interests, while the Trademark Office will be in a neutral adjudicating position. The examination for the same-day trademark applications bears the hallmark of an administrative adjudication. Therefore, in structuring the Examination Procedure, the procedural philosophy of law shall be followed with maximum reference to the procedural structure of the Civil Procedure Law. The stage of evidence exchange may also be considered to enable concerned parties to exchange evidence and make presentations, combining the written examination and public hearing in a bid to fully guarantee their rights of participation and reply.