China: What To Expect From The SPC's New Trademark Judicial Interpretation?

In 2014, the Supreme People's Court (SPC) circulated a draft and collected comments, after which the draft was significantly revised. This final version of the Provisions has been adopted at the 1703rd meeting of the Judicial Committee of the SPC on December 12, 2016 and will enter into effect on March 1, 2017.

The Provisions brings very useful guidance for the Beijing IP Court (1st instance) and the Beijing High Court (2nd instance), in relation to appeals filed against decisions of the Trademark Review and Adjudication Board (TRAB).

The 31 articles of these Provisions address a variety of situations, the main ones being related to "absolute grounds" of refusal, "relative grounds" of refusal, "bad faith" applications, other prior rights (copyright, name right etc.), the "use" of a trademark, and several procedural issues. The Provisions refers to the relevant articles of the Trademark Law (L. --- ) and to its own articles (Provisions --).

Absolute grounds

Prohibited signs (L.10)

Regarding the use of State names (L. 10.1.1), the Provisions recommends to look at the trademark "as a whole". This means that even if a trademark contains the name of a State, if the mark is not, as a whole, similar to such name and if the registration of the mark would not be "detrimental to the national dignity", the mark may be registered (Provisions 3).

The interpretation of the term "deceptive signs", in L. 10.1.7, may be made by reference to the same article of the 2001 version of the Trademark Law: "exaggeration and fraud in advertising". (Provisions 4).

The expression "having other unhealthy influence" (L.10.1.8) refers to where the filing of a trademark has a "negative or adverse effect on China's public interests", which, for example, may be the result of the filing of the name of a public figure in the political, economic, cultural, religious, ethnic or other field" (Provisions 5).

Geographical names (Chinese places above the County level or foreign places known to the public) are, in principle, prohibited under L.10.2. However, they may still be used if the sign, as a whole, has a meaning that allows distinction from the geographical name (Provisions 6).

Distinctiveness (L.11)

Signs that are the generic name of a product may not be registered as trademarks (L.11.1).

However, the sign must be examined "as a whole". If the sign contains a descriptive element, while such element does not affect the distinctiveness of the sign, or if the descriptive sign is presented in a special manner so as to serve as a source identifier, the sign may be registered as a trademark (Provisions 7).

In order to determine whether a sign is generic, the Court should verify if it is commonly perceived as such by the relevant public, and may refer to professional reference books, dictionaries etc. Such perception of the public may also be determined by reference to historical tradition, local customs and practices, geographical environment or other reasons. The Court should also consider the subjective knowledge of the applicant (who knows or should know that its trademark has become generic). Finally, the assessment should be made as of the time of filing of the application. However, if the situation has changed at the time of approval the court may base its decision on the time of registration.

Where foreign language is used, it may happen that the foreign words have a descriptive inherent meaning, and should, in principle, be refused for registration as a trademark. However, if the relevant public is hardly aware of the meaning of such word, the mark may still function as a source identifier and be registered. (Provisions 8).

Signs that are descriptive may not be registered as trademarks (L.11.2 ). This is the case for signs that merely or mainly describe the features etc. of the goods or services designated by the application. However, if the sign only insinuates the features of the goods... but does not affect its identifying function, the mark may be registered.

3D trademarks (L.12)

The registration of such a sign remains very difficult. If, under most circumstances, the relevant public is not likely to take the sign as a source identifier, the mark may not be registered. Furthermore, the fact that the sign has been originally created by or firstly used by the applicant does not necessarily prove that it is distinctive. However, it is possible to rely on acquired distinctiveness through long term or extensive use (Provisions 9).

Relative grounds

Unregistered well-known trademark (L.13.2)

The owner of an unregistered trademark may oppose or invalidate a litigious trademark by claiming that such trademark is a "duplication, imitation or translation" of its trademark, provided that the owner can prove that (1) its trademark, even though not registered in China, is well-known in China (L.13.2) and (2) that the registration of the litigious trademark is likely to cause confusion. For the determination of the likelihood of confusion, the Provisions enumerates the following factors to be considered by the Courts:

  1. The extent of similarity of the trademarks;
  2. The extent of similarity of the goods on which the trademarks are designated to be used;
  3. The extent of distinctiveness and reputation of the trademark that requests protection;
  4. The degree of attention of the relevant public; and
  5. Other pertinent factors.

The Provisions make an additional comment to the above list: the "intention" of the applicant and the evidence of actual confusion may also be taken into consideration, but - and this has been specified by a judge of the SPC during a conference introducing the Provisions – the lack of evidence concerning the intentions of the applicant or any actual confusion will not have any negative impact.

This article (Provisions 12) may be compared to the previous Opinions of the SPC, published in 2010 and 2011, where the SPC advised the Courts to take the reputation of both trademarks - the cited trademark and the litigious trademark – when assessing the similarity and the likelihood of confusion. This was called the "inclusive development theory".

The theory seems to be abandoned.

Registered well-known trademark (L.13.3)

The Provisions, then, addresses the situation covered by L. 13.3: the owner of a registered well-known trademark opposes the application, or requests the invalidation, of an identical or similar trademark designating dissimilar goods or services (Provisions 13). Interestingly, however, the Provisions does not use the word dissimilar. It may be implied, though, but as we shall see when examining Provisions 14, this omission might be voluntary. The court is to examine whether the litigious trademark is likely to cause a certain degree of association, so as to mislead the public and harm the interests of the well-known trademark owner. Such examination is to be made by considering the following factors:

  1. The distinctiveness and extent of reputation of the Cited trademark;
  2. Whether the trademarks are sufficiently similar;
  3. The goods on which the trademarks are designated to be used;
  4. The extent of overlapping of the relevant public and the degree of attention thereof;
  5. Signs similar to the Cited trademark that are legitimately used by other market entities or other pertinent factors.

Again, it may be noted that no reference is made to the reputation of the litigious trademark reputation, which confirms the abandonment of the "inclusive development theory".

Provisions 25 introduces what appears to be the implementation of a ruling made by the SPC, on May 19, 2016, in the case P&G vs. TRAB and Weishida. In this case, P&G requested the invalidation of the Weishida trademark, more than five years after the registration date. Therefore, pursuant to article 41.2 (now renumbered 45.1) of the Trademark Law, P&G needed to prove that its trademark was well-known at the date of filing of the litigious trademark, and that the litigious trademark has been applied in bad faith. But another difficulty was to be overcome: the protection of a registered well-known trademark, as provided in the law (L.13), only applies to cases where the litigious trademark is used on dissimilar goods. In this case, the goods were identical. Yet, the SPC ruled that article 13 could apply even if the goods are identical.

According to Provisions 14, if a party files an opposition of an invalidation action against a litigious trademark, claiming that its trademark is well-known, and the TRAB rules in favour of such claim on the basis of Article L.30 of the law (whereas such article concerns the protection of any trademark, even not well-known, against identical or similar trademarks designating identical or similar goods), the Court may apply Article L.30 if the trademark has been registered for less than 5 years, or apply Article L.13.3, if the trademark has been registered for more than five years.

From this provision, it appears that the SPC agrees that a trademark owner may invoke Article 13.3 (in addition to article L.30) even when the litigious trademark is applied or registered for identical or similar goods. Indeed, if Article L.13.3 can be applied, after the 5 years, to a litigious trademark that would have been refused or invalidated pursuant to Article L.30 (within 5 years), it is obvious that the "dissimilar goods" condition is no longer required for the application of such Article 13.3.

Unregistered trademark with a certain influence (L.32)

If the opponent or invalidation applicant cannot prove that his trademark is well-known, it is still possible to successfully oppose, or invalidate, a trademark that has been applied or registered "preemptively by unfair means" (L.32). The owner of the cited trademark must prove that the trademark has been used in China and has acquired a certain influence, and must also address the "unfair means" issue. Here, the Provisions brings some assistance (Provisions 23): if the applicant of the litigious trademark definitely knew or should have known of the existence of the prior trademark, this may be presumed to constitute pre-emptive registration by unfair means, unless the applicant adduces evidence to prove that he has no bad faith in exploiting the reputation of the prior used trademark". So, provided sufficient of prior use is adduced, the SPC considers that the burden of proof should be reversed onto the litigious trademark applicant.

Regarding the evidence proving a certain influence, the Provisions give examples such as continuous use for a certain period of time of a certain geographical coverage. And, to be perfectly clear, the Provisions adds that article L.32 only applies to trademarks filed on identical or similar goods or services.

Other prior rights, copyright, name right etc. (L.32)

If the prior right cited under L.32 is another civil right, such right must be valid not only before the date of the litigious trademark application but also at the time of the approval of the trademark (Provisions 18).

Provisions 19 to 22 stipulate details explaining how to prove the ownership of copyright and the conditions for obtaining protection of the name, of a pseudonym, of a trade name, of a character image.

Bad faith

Provisions 15 and 16 provide details concerning the interpretation of L. 15.1 and L.15.2. For example, the terms agent or representative used in L.15.1 should be construed widely as including any kind of intermediary in the sense of sales agency, and should include persons having a kin or any specific relationship with such agent, and even if negotiation have taken place without being concluded. Likewise, the term "other relations" used in L.15.2 covers a wide range of circumstances (family relationship, labour relation, business location in the proximity, un-concluded negotiations).

Finally, Provisions 25 deals with another aspect of article L.45.1 which is the "bad faith registration" of the litigious trademark. Here, the SPC introduces two new ideas.

First, the Court should examine, not only, the intentions of the litigious trademark applicant (at the time of filing), but also, the status of use of the litigious trademark, which implies to consider facts that occurred after the date of filing. This is also the application of the abovementioned ruling on P&G vs. TRAB and Weishida.

And secondly, where the reputation of the cited trademark is high, the Court may presume that the litigious trademark as filed in bad faith, unless the applicant can prove proper cause for such filing. This is the same reversal of the burden of proof as provided in Provisions 23.

Use of a trademark (L.49.2)

Provisions 26 clarifies the conditions for the revocation based on 3 year non-use, as stipulated in L.49.2. For example, if the used trademark has only a subtle difference with the registered trademark, this constitutes valid use. Showing the intent to use through necessary preparation may serve as a "proper reason" for the mark not to be (yet) in use. On the other hand, the mere fact of signing an assignment of license agreement, in the absence of actual use, is insufficient.

Procedural issues

Finally, the Provisions contain a few articles (Provisions 2 and Provisions 27 to 30) that address procedural technicalities.

Provision 2 stipulates that, the court may, ex officio, raise a legal ground that a plaintiff had not raised in the administrative litigation, in order to rectify a decision that appears obviously inappropriate.

Provision 28 clarifies a situation that occurs very frequently: (i) a trademark is refused on account of a prior right, (ii) the applicant files a review with the TRAB and at the same time a procedure against such prior right, but the procedure is still pending when the TRAB makes its ruling (which confirms the refusal). Then, the case is referred to the Court. The Provisions stipulate that, if the prior right obstacle has been removed ("new facts"), the Court may order the TRAB to re-make its decision (even though such decision was correct at the time).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions