Guidelines for examining and ascertaining trademark rights in administrative cases issued

The Beijing Higher People’s Court has issued a set of guidelines for examining and ascertaining trademark rights in administrative appeals/proceedings filed with the court against decisions made by the Trademark Review and Adjudication Board (TRAB) under the new Trademark Law, effective May 1 2014.

The guidelines consist of 30 articles covering five major issues, namely:

1. the recognition and protection of well-known trademarks;
2. the recognition and protection of geographical indications;
3. the determination of consumer confusion;
4. the protection of prior rights, including rights in personal names and copyright; and
5. procedural matters.

Some of the notable provisions are highlighted below:

• In a dispute involving a third-party trademark, the relevant date for the petitioner to claim and prove the recognition of its prior mark as well known is the filing date of the disputed mark. Only when the petitioner’s prior mark has been recognised as well known can the court consider other issues, such as whether the disputed mark constitutes an imitation of the prior mark, the extent of consumer confusion and the potential damage caused to the owner of the well-known mark.
• A petitioner cannot, based upon an earlier registered ordinary trademark, oppose or invalidate a geographic indication or collective trademark, and vice versa.
• In order to claim that an unregistered mark is distinguishable from an earlier mark by virtue of prior use, such use must be continuous and precede the filing date of the earlier mark. Such use must be established by evidence. When considering the likelihood of confusion, the court must take into account the evidence submitted by the owner of the disputed mark and the owner of the earlier mark, as well as the subjective status of the owner of the disputed mark (eg, its good or bad faith). Market surveys (which must contain prescribed elements) are expressly allowed as evidence to show whether the marks concerned are distinguishable.
• Registration of the name of a public (political, religious or historical) figure may constitute “other negative influence” under the law and therefore be prohibited. The court would not consider that the registration of the name of a living natural person with damage to his/her personal name rights falls under the category of “other negative influence”.
• The issue of whether a device mark constitutes a copyright work shall be governed by the Chinese Copyright Law. The drawings, copyright registration certificate, commission agreements, copyright assignment agreements, etc of the device can serve as preliminary evidence to determine the ownership of the copyright. Any copyright registration certificate obtained after the commencement of the opposition or invalidation proceedings is, per se, insufficient to prove copyright ownership.
• An opposed application may be refused, even though its owner is not liquidated but has only had its licence revoked, if the following conditions are met:

1. the business licence of the owner of the opposed mark has been revoked for over three years at the time when the administrative decision is made;
2. there is no evidence showing that the opposed mark has been assigned or licensed to others;
3. the owner of the opposed mark has neither participated in the TRAB and subsequent proceedings, nor made any statement on its corporate status or the opposed mark; and
4. the opposed mark is an imitation or copy of the earlier mark and the goods covered by the marks are related.

The new guidelines provide more certainty during trademark administrative proceedings. Whilst they are not binding on the Chinese Trademark Office and the TRAB, the latter will hopefully take them into account when adjudicating contentious trademark matters.

Annie Tsoi and KY So, Wilkinson & Grist, Hong Kong