Multi-Class Application in China, Available but Not Advisable

More than one year has passed since China revised its Trademark Law on May 1st, 2014. The newly-adopted multi-class application has proven not as good as many expected. I would summarize the pros and cons of multi-class application as follows for the applicants’ consideration.

The pros:

Workload saving for filing: The application information in many classes for the same mark can be filled in one set of documents, rather than in many separate sets of documents class by class as before;

Workload saving for administration of such following procedures as renewal or assignment: If everything goes smoothly, only one registration certificate for the different classes will be issued. Accordingly, renewal or assignment application can be filed for the multi-class registration with only one set of documents.

The cons:

No reduction of official fee: The rate of official fees for multi-class applications or single-class applications remains unchanged per class, both in the new application procedures and in such following procedures as renewal or assignment;

Delay caused by office action (OA) in a single class: If an OA arises in a class, the examination of the remaining classes will be delayed, as there is no procedure to divide the class in question from the entirety, exceptionally under conditions to be mentioned below;

Risk of complete objection caused by an OA response in a single: The China Trademark Office (CTMO) is very strict with OA responses, particularly for the OAs relating to specification of goods and services. Failure or improper response in a single class might lead to the objection of the entire multi-class application and the filing date shall not be kept;

More costly and troublesome in case of division: If a single class is rejected, it is possible to divide the rejected class(es) or part of the class(es) from the remaining class(es). More attorney fees will naturally arise for the division, though no official fee will be charged;

One chance of division solely for partial rejection: Only when partial rejection is issued by the CTMO can the applicant request for dividing an application, only during the short 15 days to appeal. To be specific, division shall not be allowed by the Trademark Review and Adjudication Board (TRAB) or the competent Court, even though the decisions of TRAB and/or the Court can also be partially favorable. In addition, division is not available for assignment, though the owner can delete the remaining class(es) or specification;

Delay risk caused by partial opposition: If a multi-class application is opposed in a single class, the entire application will be kept from registration in the remaining class(es), until an effective decision is available. As the opposition procedure can possibly undergo four instances (i.e., two administrative instances and two judicial instances), the duration of delay will be unpredictable;

No chance to re-merge a divided application: If a partially rejected application is divided, the divided applications shall not be remerged even if both the divided applications eventually mature into registration.

To sum up, although Chinese Trademark Law has introduced the multi-class application mechanism in line with the international practices, it is not yet a mature practice. More supporting rules in the assignment, opposition, renewal procedures need to be established. Under such a situation, I strongly recommend filing applications class by class as before. 

By Mr. Xiaoming Liu,