By Ding Xianjie Yang Hua   King & Wood Mallesons’ Trademark Group

According to Chinese Trademark Law, the party concerned in cases involving granting or determination of trademark rights against the decisions of the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) must bring an administrative proceeding to the First Intermediate People’s Court of Beijing Municipality. The second instance made by the Higher People’s Court of Beijing ( “Beijing Higher Court“) is a final judgment.

Recently, Beijing Higher Court publishes the Guidelines of Trial of Administrative Cases Involving Granting and Determination of Trademark Rights (the “Guidelines“), which includes 30 Articles concerning the issues on recognition and protection of well-known trademarks, recognition and protection of geographical indications, determination of confusion and misidentification, protection of prior rights of copyright and rights to names, as well as the relevant court trial procedures under circumstances that the business license of a party has been revoked but the party has not gone through the termination formalities of its company. The main points are as below.

1、 Recognition and Protection of Well-known Trademarks

Beijing Higher Court clarifies again that in cases that applied the provisions related to well-known trademarks,the cited trademark must have reached well-known status prior to the date when the application for the trademark under dispute is filed. In some circumstances, the evidence provided by the party concerned, such as the cited trademark having been recognized as well-known in other cases, may be after the filing date of the application under dispute, but if it can prove that the cited trademark has been in a well-known status before the filing date of the application under dispute, Beijing Higher Court holds that such evidence shall be adopted. This is beneficial to the party which claims the well-known of its mark and needs to provide proofs.

Beijing Higher Court also regards “in making a judgment on whether a trademark under dispute shall not be registered and shall be prohibited from use according to the protection of well-known mark, it shall in principle determine firstly whether the trademark for which protection is requested has already reached a well-known status; once it is determined, then recognize whether the trademark under dispute is a reproduction, imitation or translation of the well-known trademark; and then determine whether the trademark under disputer is likely to cause confusion and mislead the public, thus causing possible damage to the interests of the owner of the well-known trademark”. The Article clarifies the trial sequence involving well-known trademark cases: the Court shall not determine whether the disputed trademark is a reproduction, imitation, translation of a trademark request for protection and/or causes damage to the interests of the party concerned, if the trademark request for protection has not reached a well-known status prior to the filing date of the application under dispute. There hence, whether the application of the disputed trademark is filed in bad faith may not work in the determination of a well-known status.

2、 Recognition and Protection of Geographical Indications

According to the Guidelines, an early registered or well-known ordinary trademark shall not be used to block a latter geographical indication or a collective trademark application, and vice versa, even the two trademarks are same or similar for same or similar goods/services.

According to this article of the Guidelines, ordinary trademarks and geographical indications (or collective trademarks) shall not cause any obstacles to each other. Obviously, this is more favorable to the applicants of geographical indications (or collective trademarks), because they may register the application of an ordinary trademark in order to extend the scope of protection. However, the applicants of ordinary trademarks may have difficulties to meet the requirements of qualified applicants of geographical indications (or collective trademarks).

3、Determination of Confusion and Misidentification

According to the Guidelines, a latter registered trademark is not certainly a continuation of an earlier registered trademark of the party concerned, and the business reputation of the earlier registered trademark may be extended to the latter trademark application/registration only when the previous trademark is under used. That is to say, if another party’s application is filed between these two and has been used and gained certain popularity, but the anterior trademark has not been used or has not generated popularity during use, and the public is likely to confuse the trademark applied by another party with the latter trademark. In this circumstance, the latter trademark cannot claim it as a continuation of the previous trademark.

Besides, where the party concerned claims its unregistered trademark under dispute has formed a stable market after being used, and claims it can be distinguished from the cited trademark, it needs to prove that his trademark under dispute has been used continuously prior to the filing date of the cited trademark, and needs to provide evidence of this fact, such as the use, popularity of the trademark under dispute, and reasons for why the public will not confuse the trademark under dispute with the cited trademark. The subjective intention of the applicant for the registration of the trademark under dispute will be taken into account by the court.

Beijing Higher Court shows positive attitude in admitting market survey report, as for whether the public can distinguish the trademark under dispute from the cited trademark, the party concerned may provide market survey report as evidence, which also increases the possibility that market survey report can be adopted as evidence. As for the content of market survey report, Beijing Higher Court indicates its opinions that it shall describe in detail the scope, quantity, and determination of the public, the degree of attention paid by the public to their purchase, as well as the methods of research, such as overall comparison, isolation for observation, and comparison among main parts. For any market survey report, if the aforementioned factors are not contained, or are used in a wrong way, or the authenticity of such report cannot be verified, such a report shall not be adopted.

4、 Protection of Prior Rights

The Guidelines specify a series of provisions applicable to different situations of the protection of the right of name, which state “[i]f an application is filed for the registration of the name of a political, religious, historical, or any other public figure as a trademark, and there is sufficient reason to believe it will cause negative impacts on China’s political, economic, cultural, religious, national, and other public interest and the public order, the application may be deemed as an act which falls under the circumstance of ‘having other adverse effect’ as specified in Article 10.1.8 of the Trademark Law”; if an applicant files a trademark application for registration using the name of a natural person who is still alive, and thus will damage his/her right of name, Article 32 of the Trademark Law will be applicable, the application will be deemed as an act which falls under the “infringe upon the right and name of such a natural person” circumstance as specifies in Article 32. If a trademark applicant clearly knows a name of a specific nature person, and still uses this name for the trademark application by such as usurping or fraudulent means, such an application shall be deemed as an act damaging the right of name of the specific natural person.

Beijing Higher Court holds that the name concerned can be the name registered in the official household registration book, and can also be an alias, pen name, stage name, refined name, nickname, etc. And it also includes the identification symbol which has corresponding relationship with a particular nature person. The reputation of a natural person is not the precondition for the protection of his right of name, but reputation may be taken as a factor of consideration in identifying whether the public sets the corresponding relationship between a name and a specific natural person.

In relation to copyright protection, the Guidelines specify whether a trademark logo constitutes a work shall be determined in accordance with the provisions of the Copyright Law. The trademark logo design manuscript, copyright registration certificate, contract for entrustment of trademark logo design, copyright transfer contract, etc. may serve as preliminary evidences for the determination of the ownership of a copyright in the trademark logo, but a sole copyright registration certificate obtained after the trademark dispute/invalidation request being filed is insufficient for proving the ownership of the copyright of such a work.

5、 Relevant Procedures

As for the most common issues occurred in enterprises, such as their business licenses have been revoked, but they have not gone through the company termination formalities for the companies.

Based on the opinions of Beijing Higher Court, when it meets the following conditions, the registration of the opposed trademark may not be approved in accordance with Article 4 of the Trademark Law:

(1) The business license of the applicant of the opposed trademark has been revoked for more than three years before the administrative decision is made; (2) There is no evidence to show that the opposed trademark has been transferred or licensed to others; (3) The applicant of the opposed trademark has failed to participate in the trademark review procedure and the subsequent litigation procedure, and has also failed to provide any arguments or put forward any relevant claim or explanation for the status of the applicant or the opposed trademark; and (4) The opposed trademark is a reproduction or imitation of the cited trademark, and the goods designated under the two trademarks have relationship to some extent.

In case a trademark under dispute is assigned during the trademark review procedure, according to the Guidelines, if TRAB fails to provide a notice to the assignee and request its clear statement whether it participates in the review procedure, and TRAB makes an unfavorable administrative decision against the assignee, then when the assignee can prove that the reason and conclusion of the administrative decision are illegal, such an administrative decision shall be revoked; however, if the assignee is unable to prove the illegal of the administrative decision during the litigation, the claim of the assignee on the illegality of the relevant review procedure in TRAB shall be rejected after confirming the inappropriateness of the relevant procedure for trademark review.

In addition, if the assignee participates in the subsequent review procedure after the trademark is assigned, the assignor will no longer be the party concerned in the review procedure and has no right to file the administrative litigation against the decision of TRAB.