Keyword
Trademark practice - e-filing or paper-filing

Sunny Y. DENG | June 28, 2021

An electronic trademark filing system (trademark e-filing system) has been available in China since 2017. Applicants can easily submit applications online rather than by postal service or by hand at CNIPA offices. During the last four years, the use of the trademark e-filing system has been extended to all proceedings. There is no doubt that trademark e-filing is significantly more time-saving, convenient, and efficient than paper-filing. However, in certain cases, paper-filing could be considered a better choice. Here, the major differences between these two approaches are summarized and a few suggestions are provided in regard to choosing the appropriate option under different circumstances.

As shown in Table 1 below, e-filing is both faster and cheaper. In most cases, it is almost certainly the preferable approach. A hard copy of the trademark certificate will be issued for each approved trademark registration application even though the application is filed electronically. Although only electronic certificates may be available in specific cases, they have the same legal effect as hard copies.

Table 1

Paper-filing

E-filing

Official fee

Fixed

90% of the paper-filing fee

Documents

Hard copy

Soft copy

Examination time

Stipulated by Chinese Trademark Law

Generally 1~2 months faster than paper-filing

Certificate

Hard copy

Soft copy

 

However, it is recommended that applicants should consider paper-filing for particular types of cases. For example, paper-filing will be optimal for cases in which the application is required to include supplementary evidence. These include filing requests for trademark review, trademark opposition, or trademark invalidation. In these cases, supplementary evidence must be submitted in the same fashion as the original request submission. If the original request is submitted online, all the supplementary evidence should be submitted online. If the original request is submitted by paper, all the supplementary evidence should be submitted by paper. Occasionally, the electronic files are too big to be uploaded to the e-filing system; in such situations, paper-filing is a much better option for the applicant. In addition, there are cases where evidence in the form of hard copies is required, such as a letter of consent or authorization made by local authorities. It is inappropriate to submit such documents online. Finally, paper-filing is a preferable option in cases where suspension of examination is requested. Paper-filing would further delay the proceedings.

Applicants should also be aware that paper-filing is the only possible option when faced with the circumstances below:

1. Applicant information (usually the name and address) contains special letters or characters that cannot be recognized by the e-filing system

2. If the deadline for trademark renewal falls on a regular holiday, applicants can still submit the renewal request by papers on the next working day. The e-filing system does not offer such flexibility. 

Copyright © Jiaquan IP Law. All Rights Reserved. 粤ICP备16000884号