Published on October 6, 2014
1. SUBCLASSES, “STANDARD GOODS”, 40,000 CHARACTERS, AND OTHER PECULIAR ISSUES TO REMEMBER WHEN CONDUCTING TRADEMARK SEARCHES IN THE PRC Another Quality Arm & Hatchet Production By Paul Schmidt 舒明德
2. The Epidemic of Bad-Faith Paul Schmidt 舒明德 Targets are Well-Known in China
3. The Epidemic of Bad-Faith Targets are not Well-Known in China Paul Schmidt 舒明德
4. The Epidemic of Bad-Faith Some “Brands” Become Overwhelmed – Jackie Chan Paul Schmidt 舒明德
5. The Epidemic of Bad-Faith The Defensive Registration Response – Yao Ming Paul Schmidt 舒明德
6. Paul Schmidt 舒明德 Take Away: • Remember Yao Ming • Broad defensive filings are recommended, and thus also, at times, broad defensive searches
7. How many trademark classes are there in the PRC? Paul Schmidt 舒明德 Practicallyspeaking
8. PRC subclasses and “standard goods” Catalogue of Goods and Services The 506 subclasses “Standard goods and services” Paul Schmidt 舒明德
9. PRC subclasses and “standard goods” Highly Formalistic “Clothing” (2501) Not included: − Socks (2509) − Gloves (2510) − Ties (2511) Paul Schmidt 舒明德
10. PRC subclasses and “standard goods” Very Slowly Evolving “MP3 Player” not included for years - substitute standard good: “juke box” “On-line social network service” added Jan. 1, 2014 Paul Schmidt 舒明德
11. Paul Schmidt 舒明德 Take Aways: • If you have a relatively new and innovative product: – Make sure your PRC search counsel has designated the appropriate PRC subclasses in order to make sure you are looking in the most relevant areas of the PRC trademark register. – The PRC Trademark Office will probably reject it as “non-standard” and you will need to work closely with your PRC counsel to make sure you have claimed appropriate “standard goods” in appropriate PRC subclasses in order to obtain the kind of protection desired. • If you have a Class 1 product . . . . please call me.
12. Chinese Language Issues • The English/Chinese interchangeability problem Take Aways: Searches need to be run in both English and Chinese Registrations need to be made in both English and Chinese Paul Schmidt 舒明德
13. Chinese Language Issues • The 40,000 character problem 蝌蝌齦蠟- Kē Kē Kėn Là - "bite the wax tadpole” 可口可乐- Kė Kou Kė Lè - "happy mouth drink" Paul Schmidt 舒明德
14. Chinese Language Issues • The 40,000 character problem Take Away: Don’t bite the wax tadpole Translating into Chinese is hard. Often numerous translations are possible. PRC counsel often need extra time in devising two or more suitable translations – all of which should be searched. Paul Schmidt 舒明德
15. Paul Schmidt 舒明德 Chinese Language Issues The speed of counterfeiting problem
16. Chinese Language Issues The speed of counterfeiting problem Take Away: The PRC is a first to file jurisdiction - with no intent-to-use requirement - and with very high levels of counterfeiting. One has to move very fast – especially with respect to Chinese language marks. Paul Schmidt 舒明德
17. Peculiar Rejections • “Liberal" use of socialist morality rejections (社会主义) Rejected: Paul Schmidt 舒明德
18. Peculiar Rejections • “Liberal" use of socialist morality rejections (社会主义) Accepted: Paul Schmidt 舒明德
19. Peculiar Rejections • “Liberal" use of socialist morality rejections (社会主义) Strategy: Faced with a socialist morality rejection, consider reapplying with a "cartoonish" figure to get on the register, but go ahead and use the "edgy" mark. Paul Schmidt 舒明德
20. Peculiar Rejections • Overuse of “Purely Descriptive” or “Non-distinctive” rejections Strategy: This rejection problem often stems from poor translation work done by certain individual examiners. The rejections are usually overcome fairly easily on appeal provided review examiners are provided good translations from authoritative dictionaries. Paul Schmidt 舒明德
21. PRC Examiners – Who are they? Most are young – hired directly out of law school One to three months of on-the-job training Relatively high rate of turnover Paul Schmidt 舒明德
22. PRC Examiners – Total Number? Difficult number to calculate Best estimates are between 300 to 500 in any given year Paul Schmidt 舒明德
23. PRC Examiners – Applications handled per examiner? 2012 – 1,414,113 applications processed Assuming 500 examiners 2,828 applications per examiner 12 applications per day, per examiner Paul Schmidt 舒明德
24. Paul Schmidt 舒明德
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