Judicial Review Of Trademark Administrative Decisions, China Trademark System VI

Legislation

The Trademark Law is enacted to improve the administration of trademarks, protect the exclusive right to use a trademark, and encourage producers and traders to guarantee the quality of their goods and services and maintain the reputation of their trademarks, with a view to protecting the interests of consumers, producers and traders and promoting the development of the socialist market economy.

Trademark Law & Implementing Regulations

Trademark Law: Adopted by the Standing Committee of the National People's Congress on August 23, 1982 and came into effect on March 1, 1983; amended for the first time on February 22, 1993; amended for the second time on October 27, 2001; amended for the third time on August 30, 2013; amended for the fourth time on April 23, 2019 and came into effect on November 1, 2019.

Implementing Regulations: Promulgated by the State Council on August 3, 2002; amended on April 29, 2014 and came into effect on May 1, 2014.

Administrative Procedure Law & Judicial Interpretations

Administrative Procedure Law: Adopted on April 4, 1989 and came into effect on October 1, 1990; amended for the first time on November 1, 2014; amended for the second time on June 27, 2017 and came into effect on July 1, 2017.

Judicial Interpretations: The Supreme People's Court issued the Interpretation on the Application of the Administrative Procedure Law of the People's Republic of China on November 13, 2017, which came into effect on February 8, 2018. The Provisions on Several Issues Concerning the Trial of Administrative Cases on Trademark Authorization and Confirmation were adopted on December 12, 2016 and came into effect on March 1, 2017; it was amended on December 23, 2020 and come into effect on January 1, 2021.

Registered Trademark & Exclusive Right

There are four types of registered trademarks in China: trademarks for goods, service marks, collective marks and certification marks.

A registered trademark can be obtained after being approved and registered by the Trademark Office through the registration application procedures.

The right holder and the registrant of the registered mark have the exclusive right to use the registered trademark as approved for the goods/services approved to register, which is protected by law.

The exclusive right to use a registered trademark shall be valid for a term of ten years starting from the date of registration, and can be renewed for another ten years before the expiry of the term.

How to Obtain a Registered Trademark

To obtain a registration of a trademark on designated goods or services and seek a protection by law, the owner of the trademark should file a registration application before the Trademark Office.

Please see "Registering a Trademark" for the details.

Administrative litigation -- Judicial Review of Administrative Decisions

In the China trademark system, administrative litigation proceedings are established for judicial review of administrative decisions, which enables the relevant parties to file administrative lawsuits with the court against the review decisions and invalidation rulings made by the Trademark Office of the CNIPA.

Jurisdiction

Administrative litigation proceedings include administrative lawsuits filed against the following CNIPA's decisions or rulings:

- decisions on review of refusal of trademark registration applications,

- decisions on review of non-approval decisions made for trademark registration applications opposed,

- decisions on review of cancellation of registered trademarks,

- decisions on review of declaration of invalidity of registered trademarks, and

- rulings to maintain registered trademarks or declare registered trademarks invalid.

Administrative litigation proceedings shall be under the jurisdiction of the Beijing Intellectual Property Court for first instance and the Beijing High People's Court for second instance.

Statute of limitation

If a party is dissatisfied with a trademark refusal review decision, a non-approval review decision, a cancellation review decision, a review decision declaring a registered trademark invalid, or a ruling to maintain a registered trademark or declare a registered trademark invalid, the party may file an administrative lawsuit with the Beijing Intellectual Property Court within thirty days from the date of receipt of the decision/ruling.

Necessary Documents

The party (the plaintiff) shall submit the following documents for filing an administrative lawsuit with the court against the CNIPA's decision or ruling:

an administrative complaint including the basic information of the plaintiff and the defendant (CNIPA), the information of the third party (if any), the cause of action, the request, the facts and grounds, the evidence and the source of the evidence;

the administrative decision/ruling being sued;

the plaintiff's identity certification documents;

the power of attorney and the attorney's identity certification documents;

the necessary evidence or relevant documents.

Where the plaintiff is a natural person, the identity certification can be an ID card or passport. If the plaintiff is a legal person, the identity certification includes copies, stamped with the official seal, of the business license and a legal representative certificate. Where the plaintiff is a foreign legal person or a legal person in Hong Kong, Macao or Taiwan region, the identity certification includes its Certificate of Good Standing/Existence and the Certificate of Legal/Authorized Representative for the person who executes the power of attorney.

Where the plaintiff is a foreign legal person or natural person, the plaintiff's identity certifications and power of attorney must be notarized and apostilled in the plaintiff's residence country/region. These notarized and apostilled documents must also be submitted with a Chinese translation translated by a translation agency designated by the Beijing High People's Court.

Where the plaintiff is a legal person or natural person in Taiwan regions, the plaintiff's identity certifications and power of attorney must be notarized by a notary agency in Taiwan, and a copy of the notarized documents will be sent by the Straits Exchange Foundation, and the Beijing Notary Association will issue a verification certificate of consistency between the original and the copy.

Where the plaintiff is a legal person or natural person in Hong Kong special administrative region, the plaintiff's identity certifications and power of attorney must first be notarized by a Hong Kong lawyer designated by the Ministry of Justice of China, and then reviewed and stamped with a special transfer seal by China Legal Service (H.K.) LTD. established in Hong Kong.

Where the plaintiff is a legal person or natural person in Macau special administrative region, the plaintiff's identity certifications and power of attorney must be notarized by a Chinese notary public stationed in Macau by the Ministry of Justice of China, and must be stamped with a special transfer seal by China Legal Service (Macau) Limited.

Instituting a Lawsuit

Pre-registration

The statutory time limit for instituting a lawsuit is within thirty days from the date of receipt of the decision/ruling, within which it is difficult for plaintiffs in foreign countries or Hong Kong, Macao or Taiwan regions to complete the notarization and apostillation or other certification procedures and preparation of the Chinese translations. Thus the Beijing Intellectual Property Court has established a special pre-registration mechanism.

According to the pre-registration mechanism, within the statutory time limit, the plaintiff entrusts its/his attorney to submit a complaint, a copy of the plaintiff's identity certifications and the executed power of attorney to the court for preliminary proof, and pre-register the lawsuit.

The court reviews the documents and sets a pre-registration time limit (usually three months). Then, submitting the notarized and apostilled or other certified identity certifications of the plaintiff and the power of attorney and the translation thereof to the court within the pre-registration time limit can be deemed as the filing not exceeding the statutory time limit.

Docketing

The court examines the complaint, the plaintiff's identity certifications, evidence and other necessary documents submitted by the plaintiff. If the documents filed meet the requirements for docketing a case, the court will accept the case.

If the documents filed do not meet the requirements for docketing a case, the court will notify the plaintiff of rectification to be made and the time limit for doing so.

If the documents rectified meet the requirements for docketing a case within the time limit, the court will docket and accept the case. If the documents rectified still do not meet the requirements, the lawsuit will be deemed not to have been filed.

If the documents filed by the plaintiff do not meet the requirements for docketing a case and the rectification does not resolve the issues thereof, the court will make a ruling not to docket the case.

Court Trial

Scope of review

The scope of the court's review of administrative acts in the administrative legal proceedings is generally determined based on the plaintiff's request and grounds. If the plaintiff does not make a claim in the lawsuit, but the relevant determination of the CNIPA is obviously inappropriate, the court may review the relevant grounds and make a judgment after all parties have stated their opinions, but it cannot exceed the scope of review of the disputed decision/ruling.

No res judicata

Where an effective judgment of the court has made clear determinations on the relevant facts and applicable laws, and the relevant party subject to the administrative act or interested party files a lawsuit against the decision reissued by the CNIPA based on the effective judgment, the court shall rule not to accept the case in accordance with the law; if the case has already been accepted, the court shall rule to dismiss the lawsuit.

Trial

After the court accepts the case, it notifies the defendant and organizes both parties to conduct cross-examination and debate.

For cases involving other citizens, legal persons or other organizations that have an interest in the administrative act being sued or in the outcome of the case, the court notifies the citizen, legal person or other organization, such as the original opponent, invalidation petitioner, invalidation respondent, etc., to participate in the litigation as a third party.

The court hears the case based on facts and laws; if the ordinary procedure is applied, the case is usually concluded within six months from the date of filing; if the simplified procedure is applied, it is usually heard by a single judge and concluded within 45 days from the date of filing.

Grounds for an administrative decision no longer exist

During the court's hearing administrative cases in trademark administrative legal proceedings, if the grounds for the CNIPA to refuse the registration of the disputed trademark, not to approve registration of the disputed trademark in the opposition or declare the registration of the disputed trademark invalid no longer exist, the court may revoke the relevant decisions/rulings of the CNIPA based on new facts and order it to make a new decision based on the changed facts.

Judgment/Ruling

After the Beijing Intellectual Property Court makes a judgment/ruling, it will serve the judgment/ruling to both parties.

Where a foreign party or a party with residence in Hong Kong, Macao or Taiwan region is dissatisfied with this first-instance judgment, the party may appeal to the Beijing High People's Court withinthirty days from the date of delivery of the judgment; similarly the domestic parties may appeal to the Beijing High People's Court within fifteen daysfrom the date of delivery of the judgment.

If a party is dissatisfied with the first-instance ruling, it or he or she has the right to appeal to the Beijing High People's Court within ten days from the date of delivery of the ruling.

Effective

If no party appeals within the statutory time limit, the first-instance judgment/ruling will take effect.

Appeal

If dissatisfied with the first-instance judgment, a party may appeal to the Beijing High People's Court within the statutory time limit.

Appellate Court Review

After receiving the appeal, the second-instance court shall conduct a comprehensive review of the judgment or ruling of the first-instance court and the administrative act at issue, including whether the facts determined in the first-instance judgment are clear, whether the evidence is sufficient, whether the application of law is correct, etc.

The courts shall, in principle, hold a trial in court for appellate cases. In practice, however, after reviewing case files, conducting investigations, and questioning parties, the collegial panel may and usually will conduct a trial in writing for cases where no new facts, evidence, or grounds have been presented.

Based on the review situation, the second-instance court may make a judgment to affirm the original judgment, modify the original judgment, revoke or reverse the original judgment and remand the case to the first-instance court.

The second-instance judgment is the final judgment, which will take effect immediately after being served on the parties and has legal effect. The parties may not bring a lawsuit against the same administrative act again.

Retrial

Although the second-instance judgment is the final judgment, the parties may apply for a retrial under the following circumstances, but the enforcement of the judgment or ruling shall not be suspended.

For a judgment or ruling that has already taken effect, if one of the following circumstances is met, the parties shall apply to the Supreme People's Court for a retrial within six months after the judgment or ruling takes effect or within six months from the date on which they know or should have known the circumstances listed in items (2), (3), (7) and (8) below.

(1) The ruling not to accept a case or to dismiss a case was erroneous;

(2) There is new evidence that is sufficient to overturn the original judgment or ruling;

(3) The main evidence used in the original judgment or ruling to determine the facts is insufficient, has not been cross-examined, or is forged;

(4) The original judgment or ruling has indeed made errors in the application of law;

(5) The litigation procedures prescribed by law are violated, which may affect the fair trial;

(6) The original judgment or ruling omits a litigation request;

(7) The legal documents on which the original judgment or ruling was based have been revoked or amended; or

(8) The judges have committed acts of corruption, bribery, favoritism, fraud, or miscarriage of justice when hearing the case.

For applying for a retrial, a party shall submit the following documents to the Court:

(1) An application for retrial, which shall state: basic information of the applicant for retrial, the respondent and other parties in the original trial; the cause of action; the name of the original Court, the case number of the original judgment at issue; the statutory circumstances for applying for a retrial and the specific facts and grounds; and the specific request for retrial;

(2) Identity certifications of the applicant for retrial (including certificate of existence, certificate of the legal/authorized representative);

(3) Power of Attorney (if an agent is appointed);;

(4) The original judgment at issue; and

(5) The main evidence and other materials reflecting the basic facts of the case.

The people's court shall review the application for retrial within six months from the date of receipt of the case.

Review of Procedural Issues

Claims of violation of statutory procedures

Where a party claims that the following circumstances of the CNIPA constitute violations of statutory procedures, the court shall support such claims:

1. Omitting the grounds for the trademark review and adjudication raised by the party, which actually affects the rights of the party;
2. Failing to inform the members of the collegial panel during the trademark review and adjudication procedures, and where examination confirms that grounds for recusation existed but the member concerned did not recuse;
3. Failing to notifiy a qualified party to participate in the trademark review and adjudication, and the qualified party clearly raised an objection;
4. The following and other circumstances that violate statutory procedures:

• Where the Trademark Office failed to review the trademark case within the scope of trademark review adjudication, which is generally limited to the grounds and the corresponding legal provisions explicitly set out in the application and supplementary grounds by the applicant and may include the facts and grounds of the respondent's response that were directly related to the application, thereby actually affecting the rights of the party, the party claimed that the statutory procedure was violated;
• Where a review and adjudication ground was omitted in the trademark review and adjudication proceedings, in which a party applied for protection of a well-known trademark, or simultaneously applied for protection of a well-known trademark and requests a determination that the trademark at issue is identical or similar to the well-known trademark, but the examiners failed to examine the application for protection of the well-known trademark and did not support the party's request, and the omission actually affecting the rights of the party, the party claimed that the statutory procedure was violated;
• Where the party concerned has evidence to prove that the content of the disputed ruling exceeds the scope of the refusal decision for the trademark registration application, non-approval decision made for trademark registration or cancellation decision for the registered trademark, and the review request and response of the party concerned, and there is no legal basis, the party claimed that the exceeding content violated the law;
• Where in the review and adjudication application or response thereto, the party stated that it needed to supplement the evidence according to relevant regulations, but the Trademark Office directly made the disputed decision before the expiration of the prescribed time limit, the party claimed that the statutory procedure was violated;
• Where in a trademark refusal review case, the Trademark Office, without hearing the applicant's opinions, directly made the disputed decision pursuant to Article 10 (signs prohibited from use as a trademark), 11 (non-registrable signs), 12 (non-registrable three-dimensional signs) or 16.1 (geographical indications that mislead the public) of the Trademark Law beyond the refusal decision for the trademark registration, the party claimed that the statutory procedure was violated;
• Where in a trademark non-approval review case, the content of the disputed decision exceeds the scope of the goods or services for which registration were not approved, the party claimed that the statutory procedure was violated;
• Where in a trademark invalidation review or adjudication case, the Trademark Office conducted review and adjudication beyond the scope of the facts, grounds and requests stated in the party's application and response, the party claimed that the statutory procedure was violated;
• Where the Trademark Office made a new decision/ruling in accordance with the effective judgment under the collegial panel in which at least one member was not replaced, the party claimed that the statutory procedure was violated.

Review of Substantive Issues

Secondary meaning

Where the party claimed that the sign of the disputed trademark has acquired distinctive characteristics through use, the following factors shall be comprehensively considered for determining the distinctiveness:

(1) The use of the sign of the disputed trademark is sufficient to enable it to play a role in identifying the source of the relevant goods;

(2) The time, territory, scope, scale, and popularity and others of the use of the sign of the disputed trademark; and

(3) The circumstances of use of the sign of the disputed trademark by other operators.

The determination for the distinctive characteristics of the sign of the disputed trademark acquired through use shall be limited to the goods using the sign of the disputed trademark and shall not extend to similar goods.

Unregisterable three-dimensional signs

Where a three-dimensional sign applied for trademark registration consists only of a shape of the goods themselves or a part thereof, and the relevant public generally cannot easily identify it as a mark indicating the source of the goods, the three-dimensional sign does not have the distinctive characteristics required for a trademark. The fact that the shape is originally created or first used by the applicant does not necessarily endow it with distinctive characteristics required for a trademark.

Where a three-dimensional sign consists only of a shape resulted from the nature of the goods themselves, required for obtaining a technical effect, or giving substantial value to the goods, the three-dimensional sign is unregisterable pursuant to the related regulations of the Trademark Law and the use of the three-dimensional sign shall not be taken into account.

Shapes that are necessary or generally adopted to achieve the inherent purposes, functions, uses, effects and others of the goods shall be considered as shapes resulted from the nature of the goods themselves.

Shapes that are necessary to achieve the specific technical parameters, indicators and others shall be considered as shapes required for the goods to obtain a technical effect.

The appearance, design and others of the goods that affect the consumers' willingness to purchase shall be considered as shapes giving substantial value to the goods.

Observing three-dimensional sign as a whole

Where the disputed trademark contains a three-dimensional sign, it should be judged as a whole whether the trademark has distinctive characteristics. In general, a trademark may not be determined to have distinctive characteristics simply because it contains words, graphics and other factors.

When judging the similarity of three-dimensional signs as trademarks, the comparison should generally be conducted as a whole, and could not limit to words and graphics in the trademark at issue and the cited trademark previously registered.

Market research reports

The party concerned may submit a market research report to prove that the disputed trademark and the cited trademark are dissimilar with each other. However, if the conclusion of the report lacks authenticity and scientificity, the report is inadmissible.

Coexistence agreement

A coexistence agreement can be used as preliminary evidence to exclude confusion and determine whether the disputed trademark and the cited trademark are similar trademarks.

The cited trademark right holder shall agree to the application for registration of the disputed trademark in writing and explicitly state the specific information of the disputed trademark. But a coexistence agreement with conditions or time limits is generally inadmissible.

A coexistence agreement shall be genuine, lawful, and valid, and shall not harm national interests, social public interests, and the legitimate rights and interests of third parties. Otherwise it shall be inadmissible.

Where the cited trademark and the disputed trademark are similar and used on the same or similar goods, and the cited trademark right holder issues a coexistence agreement, it can be determined that the disputed trademark and the cited trademark does not constitute similar trademarks if there is no other evidence to prove that the coexistence of the disputed trademark and the cited trademark is sufficient to cause confusion among the relevant public about the source of the goods.

Subjective malice

To determine whether the applicant of the disputed trademark has subjective malice, the following factors may be considered comprehensively:

(1) The cited trademark has strong distinctiveness and popularity;

(2) The business addresses of the applicant of the disputed trademark and the cited trademark right holder are close to each other;

(3) The applicant of the disputed trademark and the cited trademark right holder belong to the same industry;

(4) The disputed trademark and the cited trademark are basically the same and the applicant of the disputed trademark has not provided a reasonable explanation.

Prior use

Commercial publicity and production and business activities of the party concerned enabled the "unregistered trademark" it claimed to play the role of identifying the source of goods, which belongs to the "already used" stipulated in the Trademark Law.

Generally, when the relevant public has already associated the "unregistered trademark" with the party, as long as the behavior does not violate the subjective will of the party, it can be determined to constitute the situation of "already used".

Certain fame

Where a party provides evidence to prove that the popularity of its prior unregistered trademark is sufficient to make the applicant of the disputed trademark know or should know the existence of the unregistered trademark, it can be determined to constitute "certain fame".

Where a party submits evidence such as the continuous use time, region, sales volume or advertising of the prior unregistered trademark, which is sufficient to prove that the trademark is known to a certain range of relevant public, it can be determined to constitute "certain fame".

Prior rights

The "prior rights" stipulated in the Trademark Law refer to other rights other than trademark rights that have been obtained and legally exist before the application date of the disputed trademark, including trade name rights, copyrights, design patents, name rights, portrait rights, geographical indications, and other legitimate prior rights that should be protected.

Where a party claims that the application for registration of the disputed trademark infringes on the "prior rights", it shall provide evidence to prove that the prior rights legally existed before the application date of the disputed trademark. If the prior rights no longer exist when the disputed trademark is approved for registration, it will not affect the registration of the disputed trademark.

The determination of whether the application for registration of the disputed trademark infringes on the prior rights of others is generally based on the law that stipulates prior rights.

(1) Prior Trade Name Rights

Where the abbreviation or trade name of an enterprise name has gained a certain degree of fame through use, has established a stable correspondence with the party concerned, and such use does not violate the will of the party, the party may claim prior enterprise name rights.

If the enterprise name, trade name or its customary transliteration of a foreign company has been used commercially in China before the date of the disputed trademark application, has a certain degree of fame and is known to the relevant public, the party concerned may claim prior enterprise name rights.

(2) Prior Copyrights

Where a party concerned claims that the disputed trademark infringes upon its prior copyrights, the Court shall, in accordance with relevant provisions, examine whether the claimed object constitutes a work, whether the party is the copyright owner or other interested party entitled to claim copyrights, and whether the disputed trademark constitutes a copyright infringement.

Where a trademark sign constitutes a work protected under the Copyright Law, the design draft, original design, contract for obtaining rights, copyright registration certificate and other documents before the application date of the disputed trademark provided by the party can serve as preliminary evidence to prove the ownership of the copyright.

Trademark announcements, trademark registration certificates can serve as preliminary evidence to determine that the trademark applicant is an interested party entitled to claim the copyrights of the trademark sign.

When determining whether the application for registration of the disputed trademark infringes the prior copyrights of the party concerned, the following elements should be considered:

(a) The work at issue constitutes the subject of protection under the Copyright Law;

(b) The party concerned is the copyright owner or an interested party of the work at issue;

(c) Before the application date of the disputed trademark, the applicant of the disputed trademark may have had access to the work at issue;

(d) The disputed trademark sign is substantially similar to the work at issue.

If any of the elements listed above is not met, it is not necessary to determine the other elements.

Where the work at issue lacks originality, it should not be considered as a work. Simple common graphics, letters and others are generally not considered as works.

For works with low originality, if the disputed trademark sign is basically visually indistinguishable from the work at issue, it can be determined to be substantially similar.

(3) Design patents

To determine the application for registration of the disputed trademark infringes on the party's prior design patent, the following are the applicable requirements:

(a) Before the applicant registered and used the disputed trademark, another party had already enjoyed the design patent, and the design patent was within the protection term;

(b) The registration and use of the disputed trademark is likely to cause confusion among the relevant public, which may damage the interests of the prior patent owner.

(c) The registration of the disputed trademark was not authorized by the patentee.

(4) Prior name rights

A name includes the name used in household registration, as well as aliases, pen names, stage names, nicknames, and sobriquets.

If a party claims that the application for registration of the disputed trademark infringes on its prior name rights, it should generally provide evidence to prove that the name has a certain degree of popularity, has established a stable corresponding relationship with the natural person, and points to the name right holder in the recognition of the relevant public, and that the applicant of the disputed trademark knowingly adopted the name to apply for trademark registration via fraudulent or misappropriation means. The relevant public is likely to believe that the goods marked with the disputed trademark have a specific connection with the natural person, such as a license relationship.

The reputation of the natural person can be used as a consideration factor to determine whether a corresponding relationship has been established between a certain name and a specific natural person to the relevant public.

(5) Prior portrait rights

If a party claims that the application for registration of the disputed trademark infringes on its prior portrait rights, it shall provide evidence to prove that the sign of the disputed trademark has individual characteristics sufficient to enable the relevant public to identify the specific natural person to which it corresponds, thereby forming a stable corresponding relationship between the sign and the natural person, and that the relevant public is likely to believe that the goods marked with the disputed trademark have a specific relationship such as a license with the natural person.

(6) Names, packaging and decorations of goods or services with certain fame

Where other specific provisions other than the "prior rights" in Article 32 of the Trademark Law are insufficient to provide relief to a party, the "prior rights" in Article 32 of the Trademark Law may be applied to the party for protection if specific conditions are met, and the court will generally determine in accordance with the provisions of Article 6 of the Anti-Unfair Competition Law.

To determine whether the "specific conditions" are met, the following circumstances should be all met:

(a) The "protected object" is the name of a work, the name of a character in a work, etc.;

(b) Before the application date of the disputed trademark, the "protected object" should have a certain degree of popularity;

(c) The applicant for registration of the disputed trademark has subjective malice;

(d) The sign of the disputed trademark is identical or similar to the "protected object".

(e) The goods designated for use by the disputed trademark fall within the scope of the popularity of the "protected object", which is likely to lead the relevant public to mistakenly believe that it has been authorized by the owner of the interests of the "protected object" or has a specific connection with the owner of the interests.

Malicious preemptive registration

In the provisions that applicants shall not preemptively register, by unfair means, trademarks that have been used by others and have certain fame, the "trademarks" refers to "unregistered trademarks", including trademarks that have not been applied for trademark registration or have expired before the application date of the disputed trademark.

A trademark should be deemed as a malicious preemptive registration as mentioned above if the following circumstances are all met:

(1) The unregistered trademark has been used prior to the application date of the disputed trademark and has certain fame;

(2) The disputed trademark and the prior use unregistered trademark are identical or similar trademarks;

(3) The goods designated for use by the disputed trademark and the goods used by the prior use unregistered trademark are identical or similar goods;

(4) The applicant for the disputed trademark knew or should have known that the other had used the trademark first.

Where a trademark applicant can provide evidence to prove that it has no malicious intent to exploit the goodwill of the prior used trademark, it does not constitute a situation of malicious preemptive registration.

To determine whether the applicant of the disputed trademark knew or should have known of the unregistered trademark of another person, the following factors shall be considered comprehensively:

(1) The applicant of the disputed trademark has contacted the user of the prior trademark regarding trademark licensing, trademark transfer, etc;

(2) The applicant of the disputed trademark has been found by the relevant authority to have infringed the trademark rights;

(3) The applicant of the disputed trademark and the user of the prior trademark belong to the same industry;

(4) The prior trademark is highly distinctive, and the disputed trademark is highly similar to it.

Where the party provides evidence to prove that the popularity of its prior unregistered trademark is sufficient to cause the applicant of the disputed trademark to know or should have known the existence of the unregistered trademark, it can be determined that the unregistered trademark has certain fame.

Where the party provides evidence such as the continuous use time, region, sales volume or advertising of the prior unregistered trademark, which is sufficient to prove that the trademark is known to a certain range of relevant public, it can be determined that it has certain fame.

Direct export: Where the goods using the prior unregistered trademark are not circulated in China and are directly exported, the claim of the party that the application for registration of the disputed trademark falls under the circumstance of preemptively registering, by unfair means, trademarks that have been used by others and have certain fame will not be supported.

Obtaining registration by fraudulent means

Where the following circumstances are all met, it can be determined that it falls under the circumstance of "obtaining registration by fraudulent means" as provided for in the Trademark Law:

(1) The applicant of the disputed trademark had the subjective intention to deceive the Trademark Office into a false understanding;

(2) The applicant of the disputed trademark had obtained trademark registration from the Trademark Office by means of fraud;

(3) The administrative action made by the Trademark Office due to the false understanding was based on the actions of the applicant of the disputed trademark, and there is a direct causal relationship therebetween.

Obtaining registration by other unfair means

The "obtaining registration by other unfair means" stipulated in the Trademark Law refers to acts other than fraudulent means that disrupt the order of trademark registration, damage the public interest, improperly occupy public resources, or seek improper benefits in order to obtain the registration of the disputed trademark, including acts such as the applicant of the disputed trademark taking preemptive registrations, in large volume or large scale, of other persons' trademarks with certain degree of popularity.

Where the following conditions are all met, it can be determined that it belongs to the above-mentioned "obtaining registration by other unfair means":

(1) The applicable subject is the applicant for registration of the trademark, except where there is evidence that the current registrant of the disputed trademark has a specific relationship with the applicant for registration, or there is a connection of intent regarding the application for registration of the disputed trademark;

(2) The applicable objects include both the registered trademark and trademark applied for registration;

(3) The application for registration disrupts the order of trademark registration, damages the public interest, or improperly occupies public resources, or seeks improper benefits by other means;

(4) The application for registration does not only damage specific civil rights.

Where any of the following circumstances occurs, it can be determined that it falls under the above-mentioned "obtaining registration by other unfair means":

(1) The applicant for the disputed trademark applied for registration of multiple trademarks, and the trademarks are identical or similar to other persons' trademarks with strong distinctiveness or high popularity, including applications for registration of trademarks of different trademark owners for the same or similar goods or services, and applications for registration of trademarks of the same trademark owner for different or dissimilar goods or services;

(2) The applicant for the disputed trademark applies for registration of multiple trademarks, and the signs of the trademarks are identical or similar to other persons' enterprise names, social organization names, or names of products, packaging, decoration or other commercial signs with certain fame;

(3) The applicant for the disputed trademark has engaged in acts such as peddling trademarks, or filing infringement lawsuits against prior trademark users after failing to assign the trademarks at high prices.

Malicious registration of well-known trademarks

For malicious registrations, the owner of a well-known trademark may file a request with the Trademark Office to declare the registered trademarks invalid beyond the time limit of five years.

The following factors may be considered in determining the above malicious registration:

(1) The disputed trademark is highly similar to the prior well-known trademark;

(2) The prior well-known trademark has strong distinctiveness and popularity;

(3) The goods designated for use by the disputed trademark are highly related to the goods of the prior well-known trademark;

(4) The applicant for the disputed trademark and the owner of the prior well-known trademark had trade or cooperative relations;

(5) The business addresses of the applicant for the disputed trademark and the owner of the prior well-known trademark are close to each other;

(6) The applicant for the disputed trademark and the owner of the prior well-known trademark had other disputes, which sufficiently cause the applicant for the disputed trademark to know the well-known trademark;

(7) The applicant for the disputed trademark and the owner of the prior well-known trademark had internal personnel exchanges;

(8) After applying for registration of the disputed trademark, the applicant for the disputed trademark has engaged in acts of free-riding on the goodwill of the prior well-known trademark;

(9) The applicant for the disputed trademark has registered a large number of trademarks of others that have strong distinctiveness and popularity.

Genericization of registered trademarks

One of the grounds for applying for the cancellation of the registered trademarks is that the registered trademark becomes the generic name of the goods for which it is approved for use.

To determine whether the disputed trademark is a generic name for goods, the sign of the trademark should be examined as a whole, and the specific goods to which the generic name refers should be determined. The goods similar to the specific goods will not be considered.

Where a party claimed that the disputed trademark had become a generic name for goods, it may submit dictionaries, reference books, national or industry standards, certificates from relevant industry organizations, market research reports, the use evidence of marketing promotion, the use evidence of the trademark on the same goods by other entities to prove the genericization.

To determine whether the disputed trademark is a generic name, it is generally judged on the factual status at the time when the party submits the cancellation application to the Trademark Office, and the factual status at time of review can be used as a reference.

Non-use for three consecutive years

Another ground for applying for cancellation of the registered trademark is non-use of the trademark for three consecutive years without justifiable reasons.

If any of the following circumstances exists, the registrant's claim to maintain the trademark registration will not be supported:

(1) The disputed trademark was only used on similar goods or services outside the approved scope of use;

(2) The disputed trademark was used but does not play the role of distinguishing the source of goods or services;

(3) The disputed trademark was symbolically used to maintain the registration.

Where the disputed trademark is used on the approved goods, the registration on other approved goods similar to such goods can be maintained.

Trademark use behavior that clearly violates the Trademark Law or the prohibitive provisions of other laws will not be deemed to constitute the use of trademark.

The subject of "use" includes the trademark owner, the licensee and other persons who use the trademark without violating the will of the trademark owner.

Where the trademark owner has clearly stated that it does not approve of the use of the disputed trademark by others, but then claimed, in the trademark cancellation review case, the use of the disputed trademark by the others, such claim shall not be supported.

Where the disputed trademark is affixed to the goods marked with another person's trademark, if the relevant public cannot easily identify that the goods come from the registrant of the disputed trademark, it can be determined that it does not constitute the use of trademark.

Where the registrant of the disputed trademark uses multiple trademarks including the disputed trademark on the same goods at the same time, if the relevant public can take the trademark as a sign to identify the source of the goods, it can be determined that such use constitutes the use of trademark.

Where the registrant of the disputed trademark has multiple registered trademarks, although there are only slight differences between the trademarks actually used and the disputed trademarks, if it can be determined that the use is for other registered trademarks, the claim to maintain the registration of the disputed trademark may not be supported.

If the actually used sign of the trademark was slightly different from the approved sign of the registered trademark, but the distinctive characteristics thereof have not changed, it can be deemed as the use of the registered trademark.

Where there was no actual use of the registered trademark, only assignment or licensing occurred; or only the trademark registration information was published or the exclusive rights to the registered trademark was declared, such acts shall not be recognized as the use of trademark.

If the trademark owner has the genuine intention to use the trademark and has made necessary preparations for actual use, but has not actually used the registered trademark due to other objective reasons, the court may determine that it has justifiable reasons.

Where the registrant of the disputed trademark is the owner of a shopping mall, supermarket and the like, it can prove that it has commercial cooperation with sellers and others by providing venues, which is sufficient to determine that it provides advice, planning, publicity, consulting and other services for promoting goods, it can be determined that the disputed trademark has been used in the "promotion for others" service.

Where the registered trademark was used extensively after the designated period (i.e. the specific three consecutive years at issue), it generally does not constitute the use of trademark within the designated period. But where there is relatively little evidence of use of the trademark within the designated period, and the disputed trademark was used continuously and extensively after the designated period, it can be comprehensively considered when judging whether it constitutes the use of trademark.

Direct export: Where the goods using the disputed trademark are not circulated in China and are directly exported, and the registrant of the disputed trademark claimed to maintain the registration, such claim may be supported.

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.