Prepared by A.

Cotton
2/20/04
Briefing Paper on the Trademark Law Treaty
For Discussions with Chinas SAIC
!S! Patent and Trademark "ffice
"ffice of Internationa# $e#ations
Issue% China was an initial signatory to the Trademark Law Treaty (TLT) bt has not
rati!ied or implemented the treaty. The "#PT$ shold rge #A%C to rati!y the TLT as it
wold signal to the international &ommnity that China is open to !oreign trademark
appli&ations on a national treatment basis and is &ommitted to strong trademark
prote&tion !or both !oreign and domesti& marks.
Background% The Trademark Law Treaty (TLT) was ena&ted in '((4 in an e!!ort to
harmoni)e !ormalities and pro&edres in the !ield o! marks in order to simpli!y* !or
owners* appli&ations and registrations o! trademarks. $ne parti&larly signi!i&ant !eatre
o! the TLT is the prohibition o! re+irements by national o!!i&es !or athenti&ation or
&erti!i&ation o! do&ments and/or signatres on trademark appli&ations and
&orresponden&e. %ndstry has noted that the new pro&edral gidelines !or administrati,e
appeals issed by T-A. (Trademark -e,iew and Appeal .oard* akin to the "#PT$/s
TTA.) re+ire all o,erseas e,iden&e to be notari)ed and legali)ed be!ore sbmission to
T-A.. #&h a re+irement reslts in signi!i&ant delays and e0tra &osts !or !oreign
trademark owners* as opposed to domesti& owners that are not re+ired to athenti&ate
e,iden&e.
This di!!erential treatment &old be seen as a T-%Ps 1national treatment/ ,iolation.
2owe,er* it is probably not appropriate at this meeting to raise the national treatment
isse dire&tly and &on!rontationally as there are sensiti,ities on the Chinese side to ".#.
&on&erns on this isse* i.e.* Chinese owners !eel that !oreign trademark owners get better
en!or&ement than that gi,en to domesti& mark holders.
&ote% %n brie!ings* %ndstry has raised &on&erns with a ,ery short deadline ('3 days) !or
appealing a de&ision !rom the Chinese Trademark $!!i&e to T-A.. %ndstry intimated
that Chinese adheren&e to the TLT might alle,iate this problem. %n !a&t* the &rrent te0t
o! the TLT does not address the isse o! time limits o! national o!!i&es. 4egotiations on
proposed re,isions to the TLT are ongoing at 5%P$/s #tanding Committee on
Trademarks* %ndstrial 6esigns* and 7eographi&al %ndi&ations (#CT). $ne s&h proposed
re,ision is a new arti&le addressing 8measres in &ase o! !ailre to &omply with time
limits.9 2owe,er* time limits in respe&t o! .oard pro&eedings wold not be a!!e&ted
nder the proposed re,ision* so the %ndstry wold not get relie! !rom Chinese
implementation o! the &rrent TLT* or the proposed re,ised TLT* as it &rrently stands.
"#PT$ will &onslt with indstry to determine whether the "#7 position on the re,ision
shold take into a&&ont the indstry &on&erns on this isse.
Prepared by A.Cotton
2/20/04
Ta#king Points%
5e know that China was an original signatory to the Trademark Law Treaty and
ob,iosly spported the treaty/s harmoni)ation o! trademark appli&ation
!ormalities.
The "nited #tates is interested in hearing whether the Chinese 7o,ernment still
spports s&h harmoni)ation* and &onse+ently* whether the Chinese will soon
rati!y and implement the TLT.
".#. indstry has indi&ated that they !a&e signi!i&ant delays and &osts de to
do&ment athenti&ation re+irements in respe&t o! presenting e,iden&e to T-A..
%ndstry has noted that the new T-A. gidelines on this point only apply to
o,erseas e,iden&e* signi!i&antly a!!e&ting !oreign trademark owners* as opposed
to Chinese domesti& owners.
The brden o! athenti&ating do&ments is parti&larly notable in light o! the
entirely too short '3:day deadline !or appeals to T-A. where s&h athenti&ated
e,iden&e mst be sbmitted. This pro&ess sally takes two weeks.
The "#PT$ has a 2:month deadline !or appeals !rom an e0aminer/s de&ision*
whi&h &an be e0tended !or good &ase.
Prior reglations permitted one ;0:day e0tension !or !iling appeals with T-A.*
bt this pro,ision has been remo,ed. 2as &onsideration been gi,en to reinstating
this pro,ision<
The "nited #tates belie,es that rati!i&ation o! the TLT wold signal a strong
stan&e by China in spport o! trademark !ormalities harmoni)ation* and a strong
stan&e against di!!erential treatment o! !oreign nationals.
%! appropriate pro&edres are in pla&e !or opposing the registration o! marks or
&an&eling e0isting marks* those bad a&tors that are !iling !radlent trademark
appli&ations be!ore the CT$ &an be s&&ess!lly &hallenged by &ompetitors who
ha,e the most interest in e0posing s&h !radlent appli&ations and
&ommni&ations with the $!!i&e.
The "#PT$ does not ha,e the resor&es to in,estigate e,ery appli&ation or
do&ment that is !iled with the $!!i&e. 5e rely on the marketpla&e to e0pose
those !radlent a&tors* as &ompetitors are the ones who are most likely to know
whether a do&ment is !radlent.
The "#PT$/s TTA. ad=di&ates oppositions and &an&ellations and will weigh the
e,iden&e where there are allegations o! !rad pon the $!!i&e. %n that way* we
Prepared by A.Cotton
2/20/04
sa,e time and resor&es by not re+iring athenti&ation o! &ommni&ations with
the $!!i&e* as well as meeting or obligations nder the TLT.
#rely* with the high nmber o! trademark appli&ations in the CT$* we wold
imagine that China is interested in sa,ing time and money in pro&essing
appli&ations.
5e wold rge the Chinese 7o,ernment to &onsider rati!i&ation o! the TLT as it
wold &ertainly send positi,e signals to the international trademark &ommnity as
to China/s &ommitment to streamlined trademark pro&essing.