With the purpose of taking advices more widely from all sectors of society and completing the provisions of judicial interpretation, the Regulations of the Supreme People’s Court on Several Issues Concerning Trials of Cases of Granting and Affirming Trademark Right (Draft for Seeking Opinions) was published on the website of the Supreme People’s Court and the website of China Court at the same time on October 14, 2014, seeking for opinions and advices publicly from the society.

The cases of granting and affirming trademark right is an important type of cases tried by the people’s courts, and such cases have increased sharply in recent years. The people’s courts received 2,161 administrative trademark cases of first-instance in 2013. In order to define and unify the standard of judgment and hear the cases of granting and affirming trademark rights accurately, the Supreme People’s Court drafted the document against the prominent problems in judicial practices on the basis of deep investigation and consultation with multiple opinions.

The seeking for public opinions will last for one month; people from all aspects of the society could give their opinions for amendments by November 15, 2014.

For opinions in writing, please send to:

The Third Collegiate Bench, IP Judicial Tribunal, Supreme People’s Court,

No. 27 Dongjiaomin Alley, Dongcheng District,

Beijing 100745 China

For emails, please send to: shangbiaoyijian@163.com

Date: October 15, 2014   
Source: The front page, People’s Court Daily

[Issuing Organization] Supreme People’s Court

[Date of Issuing] October 14, 2014

[Date of Effect] October 14, 2014

[Date of Expiry] November 15, 2014

[Category] Policy Reference

[Source] Supreme People’s Court

Regulations of the Supreme People’s Court on Several Issues Concerning Trials of Cases of Granting and Affirming Trademark Right

(Draft for Seeking Opinions)

In order to accurately try the cases of granting and affirming trademark right, exercise judicial examination power according to law, and define and unify the standard of examination, the Regulations are formulated according to the provisions of the Trademark Law of People’s Republic of China and the Administrative Procedure Law of the People's Republic of China with combination of practice of trials.

Article 1 [Type of Case of Granting and Affirming Trademark Right]

The cases of granting and affirming trademark right mentioned in the Regulations refer to cases filed by a counterpart or an interested party out of dissatisfaction with the specific administrative acts by the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce, including review of rejection of trademark application, review of trademark opposition, review of trademark cancellation, invalidation and review of invalidation.

Article 2 [Scope of Examination]

The scope of examination on whether the specific administrative acts concerning cases of granting and affirming trademark right is legal by the people’s court shall generally be determined according to the interested party’s claims and reasons. For claims the interested party raised during the adjudication and yet not raised during the litigation, where the Trademark Review and Adjudication Board made obvious mistakes in the specific administrative acts, the people’s court could make judgment concerning the wrongful acts after hearing the interested parties’ statements.

Article 3 [Large-scale pre-emptive registration]

Where the trademark registrant obviously lacks real intention to use the trademarks but files or registers a large number of trademarks which are identical with or similar to other’s trademarks of certain popularity or geographical names of certain popularity, or without justified reasons to file a large number of trademarks, and the Trademark Review and Adjudication Board rejects the applications or invalidates the trademarks according to Article 4 and Article 44 of the Trademark law, the decision of the Trademark Review and Adjudication Board shall be sustained by the people’s court.

Article 4 [Regarding Paragraph 1 of Article 10 (1) of the Trademark Law]

“Trademarks identical with or similar to the state name of the People’s Republic of China” stipulated in the paragraph 1 of Article 10 (1) of the Trademark Law refer to those trademarks that are identical with or similar to the state name in overall appearance.

For trademarks containing the state name of the People’s Republic of China yet not identical with or similar to the state name in overall appearance, if the registration of such trademarks may lead to abuse of the state name, the people’s court may determine that such trademarks comply with the paragraph 8 of Article 10 (1) of the Trademark Law.

Article 5 [Other Unhealthy Influences]

“Other unhealthy influences” stipulated in the paragraph 8 of Article 10 (1) of the Trademark Law refer to the circumstances where trademarks or their composing elements may have negative influence on public interest and public order, including politics, economy, culture, religion and nationality, etc.

Where the Trademark Review and Adjudication Board rejects an application for registration of a trademark during the procedure of review of trademark rejection on the grounds that the registration of public figures’ names as trademarks by other people without authorization may have other unhealthy influences, the decision of the Trademark Review and Adjudication Board shall be sustained by the people’s court.

Without authorization from the inheritor, where the registration of the name of a deceased natural person as trademark lead to connection between the goods bearing the mark and the natural person among  the public, such trademark may be determined as the trademark “having other unhealthy influences”.

Article 6 [Distinctiveness of Three-dimensional Trademarks]

Where the shape or part of the shape of the goods, as a three-dimensional sign, is applied for trademark registration, the determination of whether it is distinctive shall be made comprehensively based on the general understanding of the relevant public.

Where the applicant has evidence to prove that the sign has been identified as a source indicator by the relevant public through long-term or wide use, the sign may be determined as having distinctiveness.

Where the three-dimensional sign is originally created or firstly used by the applicant, such factors may be taken into consideration in determination of distinctiveness.

(Second Opinion:)

Where the shape or part of the shape of the goods, as a three-dimensional sign, is applied for trademark registration, since usually the relevant public is not likely to identify it as the source indicator, such sign does not have distinctiveness as a trademark under the common circumstances.

Where a three-dimensional sign is originally created or firstly used by the applicant, the distinctiveness of the sign shall not be taken for granted.

Where a sign without distinctiveness has acquired high popularity after use and is widely known by the relevant public, and therefore could be distinguished as a trademark, such sign may be determined as having distinctiveness.)

Article 7 [Unregistered Well-Known Trademark]

Where an interested party claims according to Article 13 (2) that a later trademark is a reproduction, imitation or translation of his/her unregistered well-known trademark and shall be rejected for registration or invalidated, the people’s court shall determine comprehensively whether confusion is likely to be caused, taking the following factors into consideration:

1.Similarity of the two trademarks;

2.Similarity or connection of goods bearing the two trademarks respectively;

3.Distinctiveness and popularity of the earlier trademark;

4.Degree of attention carried by the relevant public.

The subjective intention of the applicant for the later trademark and the evidence of actual confusion in practice may be taken into consideration for the reference in the determination of possibility of confusion.

Article 8 [Registered Well-Known Trademark]

Where an interested party claims according to Article 13 (3) that a later trademark is a reproduction, imitation or translation of his/her registered well-known trademark and shall be rejected for registration or invalidated, the people’s court shall determine comprehensively whether it is likely to mislead the public or whether it is likely to damage the interests of the well-known trademark registrant, in accordance with the relevant laws and judicial interpretations, taking the following factors into consideration:

1.Popularity of the earlier trademark;

2.Distinctiveness of the earlier trademark;

3.Whether the later trademark and the earlier trademark are similar enough;

4.Condition of goods bearing the two trademarks respectively;

5.Degree of awareness toward the earlier trademark of the relevant public of the later trademark;

6.Use condition of the signs similar to the earlier trademark by other market entities.

Article 9 [Conversion between Article 13 and Article 30 of the Trademark Law]

Where an interested party claims that a later trademark is a reproduction, imitation or translation of his/her registered well-known trademark and shall be rejected for registration or invalidated, and the Trademark Review and Adjudication Board determines that the later trademark and the earlier trademark constitute identical or similar trademarks on identical or similar goods and makes a decision according to Article 30 of the Trademark Law, the people’s court may, if the registration of the later trademark has not exceeded five years, try the case in accordance with Article 30 of the Trademark Law after hearing the party’s opinions.

Where the later trademark and the earlier trademark are registered on identical or similar goods, and the interested party considers that Article 30 of the Trademark Law is not enough to protect his/her interests so as to claim Article 13 (3) of the Trademark Law, the people’s court may try the case in accordance with Article 13 or Article 30 of the Trademark Law based on the situation of the case.

(Second opinion: The above two paragraphs are integrated as follows:

Where the later trademark and the earlier trademark are registered on identical or similar goods, and the interested party claims according to Article 13 (3) of the Trademark Law, the people’s court may try the case in accordance with Article 30 of the Trademark Law if the registration of the later trademark has not exceeded five years, and try the case in accordance with Article 13 (3) of the Trademark Law if the registration of the later trademark has exceeded five years. )

Article 10 [Order of elements of Article 13 in applicability]

To apply Article 13 (2) or Article 13 (3), the people’s court shall firstly determine whether the trademark requested for protection has reached well-known status; if affirmative, the people’s court shall then determine whether the involved mark constitutes a reproduction, imitation or translation of the well-known mark, whether it is easy to confuse or mislead the relevant public, or whether it is possible to damage the interests of the well-known trademark owner.

(Second opinion: Delete this article)

Article 11 [Pre-emptive registration by person having particular relationship with the agent or representative of the real trademark owner]

Where a trademark applicant has particular personal relationship or other particular connections with the agent or representative stipulated in Article 15 (1) of the Trademark Law, and his/her trademark application could be presumed as a result of collusion and conspiracy with the agent or representative, the people’s court may try the case in accordance with Article 15 (1) of the Trademark Law.

(Second opinion: Where a trademark applicant has particular personal relationship or other particular connections with the agent or representative stipulated in Article 15 (1) of the Trademark Law, if it could be presumed that the applicant is fully aware of the existence of the trademark owned by the person being represented, the people’s court may try the case in accordance with Article 15 (2) of the Trademark Law.)

Article 12 [“Other relationship” stipulated in Article 15 (2) of the Trademark Law]

The following circumstances may be determined as “other relationship” stipulated in Article 15 (2) of the Trademark Law:

1.The trademark applicant is in the same territory and same industry as the prior user, and the prior user’s trademark has strong distinctiveness;

2.The two parties once had negotiation on reaching agency or representing relationship, yet no such relationship was reached.

3.The trademark applicant applied for registration of a number of trademarks of the prior user.

Article 13 [Geographic Indications]

Where the owner of the geographic indication claims according to Article 16 of the Trademark Law that other people’s trademark should be rejected for registration or invalidated, and the goods bearing the disputed trademark and the goods bearing the geographic indication are not identical, he/she shall prove the use of the geographic indication on the goods is easily to mislead the relevant public to believe that the goods comes from the region of the geographic indication and hence has the particular quality, reputation or other characteristic.

Where the geographic indicator is registered as collective mark or certification mark, the relevant owner may choose to claim his/her rights according to this article or Article 13 and Article 30 of the Trademark Law.

(Second opinion on the paragraph 2: Where the interested party claims based on his/her earlier common trademark that the certification mark or collective mark of geographic indication registered by other people is in violation of Article 13 (3) or Article 30 of the Trademark Law and shall be rejected for registration or invalidated, such claim shall not be sustained. Where the interested party claims based on his/her earlier certification mark or collective mark of geographic indication that a common trademark registered by other people is in violation of Article 13 (3) or Article 30 of the Trademark Law and shall be rejected for registration or invalidated, such claim shall not be sustained.)

Article 14 [Prior Copyright]

Where an interested party claims that he/she enjoys prior copyright on the sign of the disputed trademark, and the application for registration of the disputed trademark creates prejudice to his/her prior right, he/she shall provide evidence to prove that he/she is the copyright owner or an interested party entitled to claim the copyright.

The trademark gazette and trademark registration certificate may be used as preliminary evidence in identifying copyright owner or interested party; the applicant of the disputed trademark shall provide opposite evidence if he/she disagrees.

The people’s court shall examine whether the prior right claimed by the interested party constitutes a work and whether the application for registration of the disputed trademark harms the copyright in accordance with the relevant provisions of the Copyright Law.

(Second opinion:)

Where an interested party claims that the trademark in dispute harms his/her prior copyright, the people’s court shall examine whether it constitutes a work, whether the interested party is the copyright owner or an interested party entitled to claim the copyright and whether the disputed trademark would harm the copyright in accordance with relevant provisions of the Copyright Law of the People’s Republic of China.

The trademark registration certificate or trademark gazette or the copyright registration certificate acquired by the interested party during or after the adjudication procedure alone could not be used to prove the ownership of the copyright of trademark sign; but it may be accepted as preliminary evidence in identifying the ownership of the copyright when combining with other relevant evidences.)

Article 15 [Prior name right]

Where an interested party claims that the trademark in dispute harms his/her name right, and the relevant public consider the name is indicated to the natural person so as to be likely to make the public believe the goods bearing the name are authorized by the natural person or having other particular relation with the natural person, the people’s court may determine that the trademark creates prejudice to the name right of the natural person.

Article 16 [Prior trade name right]

Where the trade name claimed by the interested party is of certain popularity, and without authorization the other people applies for registration of the trademark identical with or similar to the trade name on identical or similar goods which the prior trade name owner operated earlier, which is likely to cause confusion of the source of the goods among the relevant public, if the interested party hence claims that the trade name constitutes the prior right protected by Article 32 of the Trademark Law, such claim shall be sustained by the people’s court.

Article 17 [Image and name of the character in the works]

Where an interested party claims the trademark in dispute infringes his/her copyright of the   image of the character and is in violation of Article 32 of the Trademark Law, the people’s court shall examine whether the image constitutes a work from Copyright Law sense.

If the image and name of the character in the works do not constitute works but since have great popularity, and the use of the image or name as a trademark on the goods in relevant classes is likely to cause misunderstanding that the trademark is authorized by the right owner of the original works or has certain connection with the right owner of the original works, and if the interested party hence claims that the image or name of the character constitutes the prior right protected by Article 32 of the Trademark Law, such claim shall be sustained by the people’s court.

Article 18 [Determination of bad faith in pre-emptive registration by unfair means]

Where an interested party claims that the trademark applicant pre-emptively registers the prior trademark of some reputation through unfair means, the people’s court shall determine whether the unfair means is constituted based on two aspects: whether the applicant is or should be aware of the prior trademark of some reputation, and whether the applicant has the malice to acquire the reputation of another person’s trademark.

Usually, under the circumstance that the prior used trademark has certain reputation and the trademark applicant is or should be aware of the prior trademark, the applicant could be presumed as having bad faith. The factors, such as the prior used trademark has great distinctiveness or the trademark applicant and the user of the prior trademark are in the same territory, are helpful to in the determination of bad faith.

Article 19 [Determination of bad faith in reproduction, imitation or translation of well-known trademarks]

Where the cited mark has reached well-known status through use before the application date of the disputed trademark, and the applicant of the disputed trademark is or should be aware of the aforementioned facts, the people’s court may presume that applicant is of bad faith in applying for the registration of the disputed trademark.

Article 20 [Coexistence Agreement]

Where the Trademark Review and Adjudication Board rejects the application of a trademark, does not approve the registration application or invalidates a registered trademark on the grounds of conflicts with prior cited trademark, and the owner of the cited trademark reaches the agreement with the owner of the disputed trademark during the litigation and agrees with the registration of the later trademark, such agreement could be permitted by the people’s court.

Article 21 [Violation of legal procedures]

Where an interested party claims that the following acts of the Trademark Review and Adjudication Board constitute “violation of legal procedures” stipulated in the paragraph 2 of Article 54 (2) of Administrative Procedure Law of the People’s Republic of China, such claims may be sustained by the people’s court in accordance with the law:

1.Omission of the interested party’s important reason in the adjudication which may affect the conclusion;

2.Omission of notifying the members of the collegial panel according to the law during the adjudication, and after examination, the circumstances requiring examiners’ avoidance do exist yet they fail to withdraw;

3.Failure to notify a qualified party to attend the adjudication, and the party expressly raises objection;

4.Other acts which are seriously in violation of legal procedures and may affect the substantive interests and right of the interested party.

Article 22 [Evidences submitted during litigation]

Evidences submitted by an interested party during the litigation yet not submitted during the administrative procedures, excepted for the evidences permitted by the people’s court, are generally not accepted, except for those meeting both requirements below:

1.Evidences submitted in the litigation are aimed to supplementarily prove the relevant issues examined already by the Trademark Review and Adjudication Board;

2.The supplementary evidences are important enough to affect the substantive result of the case, and the party submitting the evidence has no other relief.

Evidences mentioned in the preceding paragraph shall be submitted within the time limit for adducing evidence specified in the procedure of the first instance, except for the new evidences submitted by the interested party according to the law during the procedure of second instance and trial supervision procedure.

Article 23 [Change of situation]

After the Trademark Review and Adjudication Board makes the decision to reject the application of a trademark, not to approve the registration application or invalidate the registered trademark, during the people’s court’s trial of the cases of granting and affirming trademark right, if the cause of not approving the registration application or invalidation no longer exists, the people’s court could revoke the relevant decision made by the Trademark Review and Adjudication Board on the grounds of change the situation and rules the Board to remake a decision according to the changed facts.

Article 24 [non bis in idem]

Where the Trademark Review and Adjudication Board makes a ruling or decision on an adjudication application, no one shall apply for another adjudication on the same facts and reasons.

Where the Trademark Review and Adjudication Board approves the preliminary publication of the applied trademark on the grounds that the applied trademark and the cited trademark do not constitute identical or similar trademarks on identical or similar goods during the review procedure, the following circumstances are not to be deemed as “adjudication application on the same facts and reasons”:

1.Where the registrant or an interested party of the cited trademark raises an opposition based on the cited trademark and the opposition is supported by the Trademark Office, the applicant of the opposed trademark files a review;

2.Where the owner of the cited trademark files an invalidation based on the cited trademark after the applied mark gets registration.

Article 25 [Death or termination of the trademark registrant]

In the trial of the administrative cases of not approving the trademark registration application, where the opposite party provides evidences to prove that the business license of the applicant of the opposed trademark has been revoked for more than three years and the opposed trademark has not been licensed to use, the people’s court may presume based on the aforementioned facts that the applicant has no actual intention to use the trademark and hence rules that the opposed trademark shall not be approved for registration.

(Second opinion: Delete this article)

Article 26 [Direct change of legal basis in the case of review of refusal of trademark application]

In the trial of the administrative case of review of refusal of trademark application, where the people’s court holds that the Trademark Review and Adjudication Board has held substantive examination over the facts and grounds at issue, the facts have been clearly found and the examination procedure was legitimate, and the conclusion of the decision was correct with only incorrect application of law, it may overrule the plaintiff’s claims by directly changing the legal basis.

Article 27 [Substantive examination]

In the trial of cases of granting and affirming trademark right, the people’s court shall examine all the substantial issues involved in the decision made by the Trademark Review and Adjudication Board and the interested party dissatisfied with. The court shall give clear opinion in the judgment regarding these issues according to the existing evidences.

Article 28 [resolution of dispute in substance]

Where the people’s court finds that all the grounds based on which the Trademark Review and Adjudication Board invalidated the trademark are untenable, all the grounds of the invalidation raised by the applicant have been tried, and the disputed trademark shall be maintained, it may directly make a ruling to revoke the decision at issue instead of ruling the Trademark Review and Adjudication Board to remake the decision.

Article 29 [circulation trial]

Where the relevant facts and application of law have been clearly determined by the people’s court in its effective judgment, if the interested party files a lawsuit against the decision remade by the Trademark Review and Adjudication Board according to the effective judgment, the people’s court may make a ruling not to accept the lawsuit in accordance with the paragraph 10 of Article 44 (1) of the Interpretations of the Supreme People’s Court on Several Issues Concerning the Execution of Administrative Procedure Law of the People’s Republic of China; for the lawsuits have been accepted, the court may make rulings to dismiss the lawsuits.