I. What is the Notification of Examiners' Opinions?
According to the Trademark Examination and Adjudication Guidelines, during the examination process, if the trademark registration department believes that the content of a trademark registration application needs clarification or amendment, they may issue a the Notification of Examiners' Opinions to request the applicant to provide clarification or make amendments. The Notification of Examiners' Opinions is a form of communication through which the trademark registration department, in accordance with the relevant provisions of the Trademark Law and its implementing regulations, requests the applicant or their agent to provide explanations or amendments to their trademark registration application within the statutory deadline and to provide corresponding supplementary evidence or correction documents, depending on the actual examination situation.
II. Under What Circumstances Would a Notification of Examiners' Opinions be Issued?
Under what circumstances would the National Intellectual Property Administration issue an examination opinion? The Trademark Examination and Adjudication Guidelines provide clear provisions on this. The common situations in which the Notification of Examiners' Opinions may be issued include:
1. Errors or unverifiable information in the application, inconsistency between the information provided by the applicant or their agent and the documents proving the applicant's qualifications, and inability to verify the applicant's business license information through the National Enterprise Credit Information Publicity System, which may require the applicant to eliminate errors through amendment or correction procedures or to provide supplementary evidence or correction documents to prove the authenticity and validity of their business license.
2. Inclusion of non-distinctive parts in the trademark that should not be exclusively used by a single applicant, requiring the applicant to declare the abandonment of exclusive rights.
3. Suspected malicious trademark registration applications not intended for use, which may require the applicant to provide explanations regarding the intent and usage of the applied-for trademark.
In this article, we primarily discuss the Notification of Examiners' Opinions issued based on Article 4 of the Trademark Law.
III. What Factors Does Article 4 of the Trademark Law Consider in Examination?
Article 4, Paragraph 1 of the Trademark Law stipulates: "Natural persons, legal persons, or other organizations who need to obtain exclusive rights to use a trademark in their production and business activities shall apply for trademark registration with the Trademark Office. Malicious trademark registration applications not intended for use shall be rejected."
So, in the actual examination process, how does the examiners examine a trademark?
When the trademark registration department determines whether a trademark registration application violates Article 4 of the Trademark Law, it comprehensively considers the following factors:
1. The number of trademark registration applications filed by the applicant or individuals, legal persons, or other organizations affiliated with them, the designated classes of goods or services, trademark transaction situations, etc.
2. The applicant's industry, business conditions, etc.
3. Instances where the applicant has been found to engage in malicious trademark registration or infringement of others' trademark exclusive rights through effective administrative decisions, rulings, or judicial judgments.
4. Situations where the applied-for trademark is identical or similar to a well-known trademark owned by others.
5. Situations where the applied-for trademark is identical or similar to a well-known individual's name, enterprise name, abbreviated enterprise name, or other commercial signs.
6. Other factors that the trademark registration department deems necessary to consider.
IV. What Remedies Does an Applicant Have When Receiving the Notification of Examiners' Opinions Due to Massive Trademark Applications?
If the National Intellectual Property Administration believes that the applicant has made a large number of applications, they may issue the Notification of Examiners' Opinions on Trademark Registration Application, citing suspected violations of Article 4, Paragraph 1 of the Trademark Law. I have previously handled replies to such notices issued based on Article 4, Paragraph 1 of the Trademark Law.
In this notice, the National Intellectual Property Administration stated the reason as follows: "The applicant has filed a total of 594 trademark applications, with 60 pending trademark registration applications and 26 classes of accumulated trademark applications. The large number of applications filed by the applicant in categories unrelated to their business scope constitutes a malicious trademark registration application not intended for use. Based on the above situation, it is proposed to determine that the behavior of applying for registration of the 60 trademark registration applications constitutes a suspected violation of Article 4, Paragraph 1 of the Trademark Law."
Article 4, paragraph 1 of the Trademark Law clearly stipulates that natural persons, legal persons or other organizations engaged in production and business activities, who need to obtain exclusive rights to trademarks for their goods or services, shall apply for trademark registration to the Trademark Office. Malicious trademark registration applications that are not intended for use shall be rejected. In order to respond to the examination opinions based on this provision and overcome the possible rejection based on this provision, the applicant should provide sufficient evidence to prove that their large number of trademark applications are not for the purpose of maliciously registering and hoarding trademarks, but to meet the actual needs of their growing production and business activities.
The applicant can overcome the above-mentioned Notification of Examiners' Opinions by submitting evidence materials indicating genuine intent to use. In response to the aforementioned examination opinions, I once represented an applicant in the gaming industry and submitted the following evidence, ultimately successfully overcoming the examination opinions. The evidence is listed as follows for reference:
1. Introduction of the applicant's industry characteristics and main business, and whether it is an industry with rapid iteration and updates;
2. Evidence of the trademarks mentioned in the examination opinions that are being used or prepared for use by the applicant, including internal product introductions, manuals, software application scenarios, social media information, software development display screens, online reports, and sales platforms on shopping websites;
3. Explanation of the absence of any violations of relevant laws by the applicant;
4. Investigation report on the registration situation of trademarks in the same industry;
5. Whether it is a supplementary registration application for the applicant's existing trademarks;
6. Other evidence proving the need to apply for trademarks for production and business purposes.
Therefore, the main purpose of Article 4 of the Trademark Law is to prevent hoarding of trademarks, malicious transfer, and seeking of unfair benefits through trademark application. If the applicant is acting in good faith and applying for trademarks for the purpose of market business activities, there is no need to be overly concerned, and only the submission of evidence of use according to the regulations is required.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
