On 10 January 2017, the Supreme People’s Court issued the Provisions on Several Issues Concerning the Adjudication of Administrative Cases on Granting and Affirming Trademark-related Rights, which will take effect 1 March 2017.
The provisions apply to cases brought in the People’s Courts by related parties or interested parties who disagree with administrative decisions on:
- Trade mark re-examination.
- Trade mark registration review.
- Trade mark revocation review.
- Trade mark invalidation declarations and invalidation declaration review.
- Other administrative acts of the Trademark Review and Adjudication Board (“TRAB”).
Specifically, the provisions clarify:
- The meaning of the certain terms and phrases in the Trademark Law of the People’s Republic of China 2013 (2013 Trademark Law).
- The application of certain provisions of the 2013 Trademark Law.
When a trade mark damages the prior copyrights of a copyright holder, what documents may be used as prima facie evidence of copyright ownership and what documents may be used as preliminary evidence of ownership.
- When a trade mark damages a natural person’s name rights, whether a person’s name rights extend to his or her pen name, stage name, translation and so on, and when the registration of a trade mark identical or similar to a person’s name is likely to lead to confusion among the relevant public.
- The circumstances where a trade mark can lead to public misunderstanding of the name of a copyrighted work and the characters in that work, or of the short name of a well-known enterprise name.
- The circumstances under which the People’s Courts may admit new facts and evidence.
- The circumstances where the People’s Courts may not accept an application to re-adjudicate a matter in relation to which a valid judgment has been issued.
Chris Smith, Consultant, Baker & McKenzie, Hong Kong
“Many of the provisions are likely to only be of interest to trade mark practitioners, but they do include important guidance on how the courts should examine cases where a disputed trade mark is alleged to infringe the prior rights of the party bringing the dispute. The provisions also provide guidance in terms of how to assess fame and on situations where bad faith can be inferred on the part of the owner of a disputed trade mark. They will not satisfy everyone, but as the examination standards of Chinese courts are generally quite opaque the provisions are to be welcomed for bringing increased clarity, particularly in terms of highlighting the types of evidence that courts should be looking for when examining a complainant’s claims.”
General Counsel for clients involved in or considering administrative litigation in the Beijing Intellectual Property Court and beyond in relation to a TRAB decision should carefully study and review the provisions with trial counsel to ensure everyone has a common understanding of the relevant sections, including the clarified evidentiary requirements.