China’s new-ish Trademark Law (effective as of May 1, 2014) was supposed to usher in a new era of efficiency, not least because the law mandated that all trademark applications receive a substantive review within nine months. But exactly the opposite happened. Trademark registrations were delayed for months due to problems with a new computer system, and it wasn’t until the middle of last year that things began to get back on a relatively normal schedule.
The respite was short-lived. It is happening again.
Over the past several months, the issuance of new trademark registration certificates has come to a virtual standstill, and this time it’s for a reason we can all relate to: the Chinese Trademark Office (CTMO) has run out of paper. You can’t make this stuff up! Last month a public notice was posted on the Ministry of Finance website seeking bids for the special paper used to print trademark registration certificates.
You would have thought the CTMO could have seen this one coming (doesn’t their printer have an error light?) but very little surprises me about Chinese trademark work these days. It’s funny: when I read Mark Cohen’s scholarly, insightful China IPR Blog I always come away with renewed appreciation for the academics and policymakers shaping the future of China’s IP law and practice. But I sometimes feel that they’re living in a different world, a world in which it doesn’t take 9 months to install a new computer system and 6 months to order new paper.
To be fair, the CTMO has not entirely shut down; trademarks are still being examined, published, and registered, and the online CTMO database continues to be updated to reflect the same. But online-only confirmation is cold comfort to any company seeking to enforce its newly-registered trademark. Without a trademark registration certificate, you won’t get far with litigation in the Chinese judicial system, enforcement actions with local AICs, or anti-infringement actions with e-commerce sites like Alibaba and JD.com. It’s not that these entities cannot proceed without the original certificate, but they invariably require proof that the original certificate exists, like a photocopy. It’s pretty difficult to photocopy a document that doesn’t exist.
In the interim, you’ll have to get creative with a stopgap solution. You can request a certified copy of the trademark, which is equally legitimate as a legal document, but that process takes a couple months. You could print out a screenshot from the CTMO website and have it authenticated by a notary, but there’s no guarantee that such a document will be accepted. Or you can think about protecting your rights via registrations for copyrights and design patents. Frankly, both of the latter should already be in your quiver if you’re serious about fighting IP infringement.