Legality of notice issued by Trademark Office challenged

As of January 1 2013, China started to accept trademark applications for seven specific types of retail and wholesale service for pharmaceutical, veterinary and sanitary preparations and medical supplies in Class 35 under new Subclass 3509.

Transitional arrangements were made by the Trademark Office which provided that, among other things, all trademark applications filed in respect of the new services from January 1 to January 31 2013 were deemed to be filed on the same day. To the extent that the applied-for marks were the same or similar, their priority would be determined in the following order by:

  • prior use in China (before January 1 2013);
  • agreement; and
  • drawing lots.

The legality of this particular transitional provision was brought before the Beijing Intellectual Property Court, which recently held that the provision is ultra vires. Under Article 31 of the Trademark Law, “the same day” means “the same natural day”. By deeming trademark applications filed in the transitional period (January 1 to January 31 2013) to be filed on the same day, the Trademark Office had purported to redefine the term 'the same day'. This act amounted to amending the Trademark Law, which was outside the office's power. Further, the transitional provision also departed from the first-to-file principle, which is in force in China.

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