Expert Workshop with the State Administration for Industry and Commerce on Trade Mark "best practices"

In 2014 IP Key and the State Administration for Industry and Commerce facilitated exchanges between European and Chinese experts on trade mark best practices. Building on the outcome of such exchanges, a number of areas requiring further investigation were identified.

Expert exchanges therefore continued in 2015, in view of the implementation of recently revised Chinese Trade Mark Law.

The European Commission and the State Administration for Industry and Commerce of China, with the technical support of IP Key, therefore organized a two-day workshop and roundtable on December 15th and 16th with Trade Mark Office experts who addressed the following topics:

•             classification of goods and services:

-      criteria for assessing similarity of goods/services;

-      fee treatment, in  multi-classes TM applications;

•             use of modern IT Tools including Databases and Web resources in daily Examiners’ work;

•             requirements and formalities of TM examination, opposition and registration, with specific focus on non-conventional  trade marks;

•             e-filing and e-communication;

•             formalities for evidence with foreign origin (legalization, notarization and translation).

•             case studies of oppositions and invalidations of TMs filed /registered in “bad faith”, including judicial reviews:

-      how to prove “bad faith” (direct/indirect proof, presumptions);

-      the impact of well-known character/reputation of the prior trade mark on assessment of “bad faith”;

•             means of evidence for proving well-known character of trade marks (including in an interconnected and globalized market, e-commerce, blogs);

•             alternative dispute resolution methods (mediation in trade mark conflicts);

•             divisional applications;

•             files' organization;

•             templates/modular elements;

•             quality management:

-      control and timely administration of trademark applications, oppositions and invalidations;

-      motivation of decisions.

OHIM and TRAB/CTMO experts presented several case studies and discussed solutions.

Approxinately 80 TRAB/CTMO examiners joined the workshop, together with several EU IP experts from government and industry, with extensive exchanges aimed at reaching common understanding on trade mark practice issues.

IP Key is grateful once again to the State Administration for Industry & Commerce for this excellent opportunity of dialogue and exchange. While the workhsop marked the last activity of 2015 in the framework of the EU China technical cooperation on IP, the two parties look forward to more chances for cooperatiojn in the course of 2016.

For more information on this workshop please contact the activity coordinator Davide Follador davide.follador@ipkey.org and, for general information on IP Key’s activities, Jaspal Channa jaspal.channa@ipkey.org.

Download the Expert Workshop Agenda HERE