Dear Valued Clients,
The China National Intellectual Property Administration (CNIPA) has recently changed its practice for issuing documents related to trademark opposition, cancellation, and invalidation cases, specifically by ceasing to copy relevant legal documents to Chinese trademark agencies. Although no formal written notice has been published, this new practice has been confirmed by the CNIPA through its official online inquiry channel. This means that all response notices and subsequent documents for opposition, cancellation, and invalidation cases (hereinafter referred to as "Response Documents") will only be sent to the address recorded in the Trademark Register. Following this adjustment, trademark owners are advised to pay close attention to official correspondence to avoid missing deadlines, which could result in loss of the trademark rights.
After this adjustment, the rules for delivering Response Documents will differ between Chinese trademark applicants and non-Chinese trademark applicants, as detailed below:
1. Chinese Trademark Applicants
Generally, Response Documents will be sent to the "Domestic Applicant Contact Address" recorded in the Trademark Register, which may have been provided in the initial application or subsequently updated through a change recordal procedure. Such address information is not publicly available, and Chinese trademark agencies will no longer directly receive such Response Documents from the CNIPA.
For trademarks that do not have a registered "Domestic Applicant Contact Address" (for example, those applied for before May 1, 2014), Response Documents will be sent by mail to the "Applicant Address (Chinese)" recorded in the trademark register.
2. Non-Chinese Trademark Applicants
1) National Applications
Generally, Response Documents will be sent to the "Domestic Recipient for Non-Chinese Applicant" which were filled in the initial filing stage or later in a change recordal procedure. Details of such "Domestic Recipient for Non-Chinese Applicant" are NOT open to the public. Delivery is by mail only.
Note: For trademarks not yet registered, it is possible to change either the recorded agency or the "Domestic Recipient for Non-Chinese Applicant". For registered trademarks, only the "Domestic Recipient for Non-Chinese Applicant" can be changed, not the agency.
For trademarks where no "Domestic Recipient for Non-Chinese Applicant" is registered, such as those applied for before May 1, 2014, Response Documents will be sent preferentially to the agency that most recently handled a procedure on the specific mark (e.g., review of refusal, change, renewal, etc.). Delivery is by mail only.
2) Madrid International Registrations (IR)
If a specific IR has not undergone any procedures in China (e.g., review of refusal, application for registration certificate, etc.), Response Documents will be sent preferentially to the representative address or registrant address recorded in that international trademark's WIPO file. Delivery is by mail only.
Note：
- Even if the applicant owns other Chinese trademarks or other IRs that have undergone procedures in China, this rule still applies, i.e., documents are mailed to the representative address or registrant address recorded in the specific international trademark's WIPO file.
- The procedure for filing an opposition response regarding an IR remains unchanged. Specifically, after receiving an opposition application, the CNIPA will notify WIPO, who will then serve a provisional refusal notification to the address of the representative or the registrant recorded in the international trademark file. If the international trademark registrant intends to submit an opposition response, they should first appoint a trademark agency in China to retrieve the detailed opposition application materials from the CNIPA and prepare a response addressing the opposition grounds and evidence.
If a specific IR has undergone procedures in China (e.g., review of refusal, application for registration certificate, etc.), Response Documents will be sent preferentially to the agency that most recently handled a procedure on the specific IR.
Note: Due to the limited information displayed in the online database of the CNIPA, it is actually quite difficult for us to verify whether a trademark has undergone any procedures in China and through which agency it was processed.
Considering that missing Response Documents from the CNIPA may lead to serious consequences such as being deemed to have automatically abandoned the right to respond, or cancellation of the trademark, we recommend that trademark applicants review and update the following information for their existing Chinese trademark registrations: applicant name, applicant address, domestic applicant contact address (for Chinese applicants), and domestic recipient address (for Non-Chinese Applicants). This will help ensure the proper and timely receipt of official documents such as Response Documents issued by the CNIPA in the future.
