New documentary filing requirements before Beijing IP Court now in effect

As a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights, the People’s Republic of China introduced the judicial review of administrative decisions issued by the Trademark Review and Adjudication Board (TRAB) in the second amendment to China’s Trademark Law in 2001.

At first, the administrative review of TRAB decisions was handled by the Administrative Chamber of the Beijing Intermediary Court (eventually, this was handled by a specialised IP tribunal within the Administrative Chamber); this responsibility was later transferred to the recently created Beijing IP Court in November 2014.

The documentary filing requirements for foreign companies requesting the administrative review of a TRAB decision remain as follows:

1. an executed power of attorney (POA);
2. an identity certificate of the legal representative (ICLR); and
3. a copy of the applicant’s certificate of incorporation (COI).

The POA, ICLR and COI must all be notarised and legalised, and the original documents must be submitted to the court to satisfy the formality requirements.

The ICLR certifies that the person executing the POA is authorised to sign the POA on behalf of the company. Previously, in order to be granted signing authority under an ICLR, the named person had to swear before a public notary that he/she was authorised to sign legal documents on behalf of the company.

On November 9 2015 the Beijing IP Court sought public opinions on the "Guidelines for Handling the Pre-Record of Administration Litigation with the Beijing IP Court" ("北京知识产权法院行政案件起诉预登记办理指南"). However, some judges of the Case Filing Chamber of the Beijing IP Court have already adopted certain proposed requirements that will affect all types of business organisations.

Under these requirements, a business organisation must submit supporting evidence from the local company register in order to demonstrate that the person named in the ICLR is empowered to sign legal documents on behalf of the organisation.

Three examples have been provided as to how the new ICLR conditions may be met:

1. Reference may be made to a company’s corporate bylaws or other corporate documents recorded with the local company register, if the documents explicitly provide that the power to execute legal documents on behalf of a company resides with a specific position within the company, such as the chief executive officer, chief financial officer or general counsel.

2. If there is no reference to the delegation of the signing authority in a company’s corporate documents recorded with the local company register, the board members or shareholders of the company may hold a meeting before a public notary to issue a resolution delegating the signing authority to a person or a position within the business organisation.

3. If a company’s corporate seal is recorded with the local company registry, the company may apply the corporate seal to the ICLR and submit the ICLR, along with a statement from the public notary that the chop on the ICLR and the corporate seal recorded with the company registry are identical.

While the abovementioned requirements have not been publicly announced yet, it is believed that some judges of the Beijing IP Court have already begun to ask applicants seeking the judicial review of TRAB decisions to provide one of these supporting documents. 

To avoid the possibility of an application for administrative review being rejected by the Beijing IP Court, it is recommended that business organisations with trademark rights in China, especially those who regularly appeal TRAB decisions to the courts, should start to consider how they may satisfy the new requirements.

Leslie Wang and George Chan, Simmons & Simmons LLP, Beijing