China: Regulations Of The Supreme People's Court On Issues Involving Trial Of Administrative Cases Concerning Decisions On Ownership Of Trademark

The Regulations, adopted by the 1703 Meeting of the Judicial Committee of the Supreme Court on December 12, 2016, is now published and come into effect on March 1, 2017.

2017 Judicial Interpretation No 2

According to Trademark Law of the People's Republic of China and Administrative Procedure Law of the People's Republic of China, combined with judicial practice, the Regulations is established to correctly trial administrative cases concerning decisions of ownership of trademk

Article 1 The so-called administrative cases concerning decisions of ownership of trademark in the present Regulations refer to those wherein the counterpart or an interested party is dissatisfied with the administrative decision of the Trademark Review and Adjudication Board of the Administration for Industry and Commerce under the State Council (Hereinafter referred to as TRAB), such as review on refusal, review of disapproval of registration, review of non-use cancellation, invalidation and review of invalidation, and files a lawsuit to a People's Court.

Article 2 The scope of trial by the People's Court for the administrative cases concerning decisions of ownership of trademark is generally determined by the claims and grounds of the plaintiff. The People's Court may investigate and judge the subject matter after the statement of all the parties where obvious impropriety exists in the decisions by the TRAB.

Article 3 "Those identical with or similar to the State name of the People's Republic of China;" in Article 10.1.1 of the Trademark Law refers to the trademarks as a whole identical with or similar to "the State name of the People's Republic of China For those containing yet as whole not identical with or similar to "the State name of the People's Republic of China", People's Court may judge according to Article 10.1.8 of the Trademark Law where they may be detrimental to national dignity as registered trademarks. Article 4 For "those having the nature of fraud, being liable to mislead the public about the characteristics of the goods such as the quality or the place of origin", where the TRAB consider the situation be applied to Article 10.1.7, it is supported by the People's Court. Article 5 For "those detrimental to socialist morals or customs, or having other unhealthy influences", the People's Court may judge according to "other unhealthy influences" in Article 10.1.8 of the Trademark Law.

The situation where the names of public figures in the fields of including but not limited to political, economy, culture, religion and nationality are applied for registration as trademarks is applied to the aforesaid "other unhealthy influences".

Article 6 For trademarks consisted of the geographical names of administrative divisions at or above the county level and foreign geographical names well-known to the public, where they are distinct from geographical names in overall meaning, the People's Court should not consider the situation be applied to Article 10.2 of the Trademark Law.

Article 7 When determining the distinctive characteristics of a disputed trademark, the People's Court shall consider the trademark as a whole according to the common sense of the relevant public of the designated goods. Where descriptive characteristics in a trademark will not affect its distinctive characteristics as a whole, or the descriptive characteristics is expressed in a unique way, while the relevant public are able to identify the goods source, it shall be considered distinctive.

Article 8 Where a disputed trademark is in a foreign language, the People's Court shall judge whether the trademark is distinctive according to the common knowledge of relevant public within the territory of China. Where the inherent meaning of the foreign language contained in a trademark may affect its distinctiveness when used on the designated goods, while the relevant public have a low awareness of such inherent meaning and are able to identity the goods source, it shall be considered distinctive.

Article 9 Where a three-dimensional sign applied for trademark registration merely indicates the shape or a part thereof inherent in the nature of the goods concerned, and the relevant public are not able to identify it as the sign of source of its designated goods, it does not have distinctiveness as a trademark That the aforesaid shape is created originally or used first by the applicant will not certainly generate the distinctiveness of the trademark The sign in Paragraph 1 may be considered distinctive where the relevant public are able to identity the goods source by it after long term or wide use.

Article 10 Where a disputed trademark is the generic name of goods by law or established by use, the People's Court shall consider it as a generic name according to Article 11.1.1 of the Trademark Law. A trademark shall be considered as a generic name where it is a generic name according to national or industrial standard, or where it is considered by the relevant public to represent a kind of goods. Where it is listed as the generic name of goods by books such as a professional reference book and dictionaries, it may be as a reference to considering it as a generic name.

An established generic name is judged based on the common knowledge of the relevant public in a nationwide scale. The people's court may consider a product name as a generic, as it is used in the related market of fixed goods originated from factors such as historical tradition, customs and geographic circumstance.

The applicant of a disputed trademark knows or shall know his trademark as an established name of goods in some region, the People's court shall consider it as a generic name. Generally, the People's Court judges a generic name of a trademark according to the de facto status at the application date of the trademark. Where the de facto status changes at the registration, the de facto status at registration shall be the basis for judgement. Article 11 The people's court shall consider it applied to the situation in Article 11.1.2 of the Trademark Law where signs merely indicate the quality, principal raw materials, function, use, weight, quantity or other features of the goods in respect of which the signs are used. That the trademark or other composing elements indicate the characteristics of the goods yet not affecting its function as source identifier of goods is not applied to the situation whereof.

Article 12 Where a litigant claims a disputed mark as a reproduction, imitation, or translation of a well-known trademark of another person not registered in China shall not be granted for registration or be invalid according to Article 13.2 of the Trademark Law, the People's Court shall consider the interaction of the following elements so as to judge whether confusion may be likely caused:

  1. The similarity between the marks
  2. The similarity between the goods
  3. The distinctiveness or publicity of the trademark claimed to be protected
  4. The degree of attention of the relevant public
  5. Other related elements

The subjective intention and the evidence of actual confusion may be taken as reference when judging the likelihood of confusion.

Article 13 Where a litigant claims a disputed mark as a reproduction, imitation, or translation of of a well-known trademark of another person already registered in China shall not be granted for registration or be invalid according to Article 13.3 of the Trademark Law, the People's Court shall consider the interaction of the following elements so as to judge whether public may be misled and damage may be caused to the interests of the registrant of the well-known trademark:

  1. The distinctiveness and publicity of the cited marks
  2. The similarity of marks
  3. The situation of designated goods
  4. The degree of overlapping and attention of the relevant public
  5. Marks similar to the cited marks lawfully used by other market entities

Article 14 Where a litigant claims a disputed mark as a reproduction, imitation, or translation of of a well-known trademark of another person already registered in China shall not be granted for registration or be invalid and the claim is supported by the TRAB according to Article 30 of the Trademark Law, the People's Court may apply Art. 30 of the Trademark Law, when the disputed trademark is registered less than five years, while Art. 13. 3 of the Trademark Law, when the disputed trademark is registered more than five years, after listening to the statements of the litigant.

Article 15 Where the agent or representative of the person who is the owner of a trademark applies, or the agent or representative of the person who is the owner of a trademark in sense of sales agency, applies for registration of a trademark identical with or similar to the trademark in question in respect of the same or similar goods, without authorization, Article 15.1 of the Trademark Law shall apply.

During the discussion of the establishment of the representative relationship, where the aforesaid agent or representative applies for the registration of the trademark, Article 15.1 of the Trademark Law shall apply.

Where certain relationship such as kinship exists between the applicant of a trademark and the agent or representative, it may be concluded that the registration arises from a malicious collusion between applicant and the agent or representative, which is applied to Article 15.1 of the Trademark Law.

Article 16 The following situation may be regarded as "other relationship" in Article 15.2 of the Trademark Law:

  1. Kinship between the applicant and the prior user;
  2. Labor relations between the applicant and the prior user;
  3. The applicant near the business address of the prior user;
  4. A failed discussion on achieving agent and representative relationship existed between the applicant and the prior user;
  5. A failed discussion on achieving contract and business contact relationship existed between the applicant and the prior user.

Article 17 Where according to Article 16 of the Trademark Law, an interested party of a geographical sign claims a trademark of another person shall not be registered or be invalid and is able to prove the disputed trademark, though used on different goods, would likely mislead the relevant public to mistake the goods as originating from certain region, and thus having certain quality, reputation or other characteristics, such claim shall be supported by the People's Court.

The interested party or the owner thereof may claim his right according to Article 16, or separately to Articles 13 and 30, where the geographical sign is registered as a collective mark or a certification mark

Article 18. The prior right in Article 32 includes civil rights which shall be enjoyed by the litigant before the application date of the disputed trademark and other legitimate rights and interests which shall be protected. Where the prior right no longer exists, when the disputed mark is registered, the registration of the disputed mark shall be maintained. Article 19 Where a litigant claims his prior copyright is infringed by the disputed trademark, the disputed trademark, the People's Court shall investigate whether the object to be claimed constitutes a work, the litigant is the copyright owner or an interested party with the right to claim copyright and the disputed trademark infringes the copyright in accordance with the Copyright Law.

Where a trademark is a work protected by the Copyright Law, all of the manuscript, original copy, contract attaining rights and copyright registration certificates before the application date of the disputed trademark related to the trademark may be the preliminary evidence to prove the copyright ownership.

A Trademark gazette and a certificate of registration may be preliminary evidence to certify the applicant as an interested party with the right to claim the copyright of the trademark. Article 20 Where the relevant public deem the trademark represent the natural person and is likely to regard the goods with the trademark licensed by or specifically related to the natural person, the People's Court shall consider the trademark infringes the right of name of the natural person when a litigant claims a disputed mark infringes his right of name.

It is supported by the People's Court, where a litigant claims his right of name with particular names, which have certain publicity and establish a stable corresponding relation, such as pseudonym, stage name and translated name.

Article 21 Where a trademark identical with or similar to the trade name with certain publicity in the market claimed by the litigant is filed for registration without the authorization of the owner, and it is likely to cause public confusion on the source of the goods, the People's Court shall support the litigant's claim for prior right. Where a litigant claims protection for an abbreviation of its enterprise name, with certain market reputation and established stable corresponding relation with the enterprise, it is applied to the previous paragraph.

Article 22 The People's Court shall investigate according to Article 19 of the present Regulations where a litigant claims a trademark infringes his character image copyright. For a work within the term of protection, where the title of the work, the names of the characters in the work and other elements have relatively high reputation, and the use thereof as a trademark on related goods may mislead the public to a license of and specific connection with the owner of the copyright, the People's Court shall support the litigant's claim on this prior right.

Article 23 Where a prior user claims an applicant registers in an unfair manner a trademark that is already in use by another party and enjoys substantial influence and the applicant knows or shall know the trademark, it may be concluded as "registration in an unfair manner", unless the applicant proves no malicious use of the reputation of the prior mark.

The People's Court may consider it enjoys substantial influence where the prior user proves the prior mark with continuous use time, religion, sales or advertising.

Where the prior user claims that the applicant files the application for his prior trademark with substantial influence on dissimilar goods in accordance with Article 32 of the Trademark Law, it is not supported by the People's Court.

Article 24 Where the order of the trademark registration is disturbed, public interest is damaged, public resource is occupied unfairly or unfair interest is obtained in a manner rather than fraud, the People's court may consider it as "other unfair means" in Article 44.1 of the Trademark Law.

Article 25 The People's court shall overall consider the publicity of the cited marks, the reasons for application of the applicant of the disputed mark and the actual situation to use the disputed trademark to judge the subjective purpose. Where the cited mark enjoys a highly publicity and the applicant of the disputed mark has no just cause, the People's Court may consider the registration as "Malicious Registration" in Article 45.1 of the Trademark Law. Article 26 Use by the owner of the trademark right, others with license and other use without violating the will of the owner of the trademark right may be considered as the "use" in Article 49.2 of the Trademark Law.

Nuance in actual use of the trademark and the trademark approved for registration without changing its distinctiveness may be considered as the use of the registered mark. No actual use of the registered mark only with license or transfer action, or publication of registration information and the claim on the exclusive right to use may not be considered as the use of the registered mark.

Where the owner of the trademark right has real intention and preparation to use the mark yet not using the registered trademark for other objective reasons, the People's court considers the owner with justifiable reasons.

Article 27 It is supported by the People's Court where a litigant claim the following situation is applied to "violation of statutory procedures" in Article 70.3 of the Administrative Litigation Law:

  1. Omission of the reasons for review of the litigant, leading to actual influence on the right of the litigant
  2. Without notification of the panels during the review procedure, who should be accused with cause after investigation.
  3. The qualified litigant who raises an objection for not being informed to participate in the Review
  4. Other situation violating statutory procedures

Article 28 During the trial of administrative cases concerning decisions of ownership of trademark, where the reasons for TRAB's decisions of refusal, disapproval of registration or invalidation no longer exist, the People's Court may cancel the related decisions and order the TRAB to make decisions again according to changed fact.

Article 29 Where the litigant finds new evidence formed after the original administrative action or is unable to attain or provide evidence within prescribed time limit, or file new review application according to new legal basis, it is not re-filing the review application based upon "the same fact and ground".

During the procedures of the review of refusal of a trademark, where the TRAB approves the application trademark for preliminary publication for the reason that the trademark applied for registration and the cited mark do not constitute similar or identical marks on similar or identical goods, the following situation is not regarded as filing another review application for "the same fact and ground":

  1. Where the owner or interested party of the cited mark files an opposition according to the cited mark and the applicant of the opposed mark applies for a review, it is supported by the TRAB.
  2. The owner or interested of the cited mark files a request for invalidation against the application trademark approved for registration according to the cited mark.

Article 30 The judgment by the People's Court that comes into effect, has already made clear affirmation on related facts and laws applicable, where the offeree or interested party files a lawsuit against decisions made again according to the aforesaid judgment by the TRAB, the People's Court shall not accept the lawsuit in accordance with law. For those accepted, the court shall have them dismissed.

Article 31 This Law shall enter in force on 1 March 2017. Administrative cases concerning decisions of ownership of trademark trialed according to the 2001 Trademark Law may be applied to the present Regulations.

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.

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