2017.01.10
James Cheng
The Supreme People’s Court promulgated Rules from the Supreme People’s Court on Issues in the Hearing of Trademark Grant and Ownership Administrative Decisions (the “Provisions”) to address issues in trademark grant and ownership decisions between the Trademark Review and Adjudication Board (the “Board”) of the industry and commerce authority under the State Council. The Provisions came into effect on March 1, 2017 and are highlighted below.
I. Scope of application
The Provisions primarily apply to cases where the respondent or an interested party wishes to contest in a people’s court the Board’s decision to reject reconsideration of a trademark application, refuse registration of a trademark, and reject reconsideration of a cancellation of a trademark, announcement of an invalid trademark or reconsideration of an invalidation announcement.
II. Major provisions
With respect to the aforementioned common issues in litigation, the provisions primarily cover the following aspects:
1. For claims not asserted by the plaintiff in litigation but the Board perceived there to be clear inequities, such dispute may be adjudicated by the court after the parties have made their statements.
2. A more detailed explanation is provided for refusal to register a mark under Article 10 of the Trademark Law, including where it is “similar to the name of a country”, “misleading”, or has “improper influence”.
3. Analysis and guidance are provided with respect to determining “distinctiveness.” The Provisions emphasize the use of “public common knowledge” to determine distinctiveness, as well as provide for clearer rules regarding foreign language marks and three dimensional marks.
4. An assessment standard is provided for the determination of “generic names.”
5. With respect to claims involving famous marks, more detailed analysis factors for determining the propensity of confusion are provided.
6. There is now a clearer scope regarding A the determination of agency relationships under Article 15 of the Trademark Law.
7. There is now a clearer basis for deciding disputes involving geographic indicators.
8. Further explanation is provided for disputes involving “priority rights.” Copyrighted contents and company names can both be deemed as priority rights.
9. Clarification regarding the circumstances for protecting the name rights of natural persons.
10. There are now more detailed consideration factors for determining “malicious registration” and “unjust means.”
11. Further explanation is provided with respect to trademark usage issues.
12. Specific provisions are made with respect to “violation of statutory procedures” and “same facts and reasons.”
III. Analysis
The release of the Provisions provides a basis for a more accurate application of the Trademark Law based on its original legislative objectives, with in particular the protection of priority rights, prevention of malicious registrations, as well as the more detailed explanations regarding the administrative process. For trademark applicants or interested parties, those explanations provide a specific scheme to follow in evidence preparation and trademark protection; and from the Board’s perspective, it is now easier to decide whether to grant trademark rights or not. In addition, the Provisions provide for more specific solutions to the issue of recurrent litigation in trademark grant and ownership determination administrative actions, thereby reducing the litigation burden of the relevant parties to a certain extent. Therefore, the release of the Provisions may prove to be of substantial help in increasing the efficiency of deciding trademark grant and ownership cases.