New rules on trademark reviews implemented

China

The PRC government has issued new Rules for Trademark Review and Adjudication. The 107 rules comprehensively cover the practice and procedure to be followed in contentious trademark reviews before the Trademark Review and Adjudication Board (TRAB).

A dissatisfied party may apply to have TRAB review a decision by the Trademark Office regarding an opposition or cancellation application. If the party is still dissatisfied, TRAB's decision may then be appealed to a people's court pursuant to new Trademark Law Implementing Regulations (see Long-awaited Trademark Law Implementing Regulations come into force). The court can either review TRAB's decision or refer the matter back to TRAB for re-examination before a new panel of officers.

Except in factually simple cases which may be reviewed by one TRAB officer, all cases shall be reviewed by a panel of at least three officers. Panels consisting of more than three officers shall consist of an odd number. If a panellist has a potential conflict of interest, he/she should excuse himself/herself. Failing this, a party to the conflict may apply to have the panellist withdrawn.

Unless one of the parties applies for a hearing, or the panel decides to conduct a hearing on its own volition, reviews shall be decided based on the written documents that the parties submit. The rules provide detailed requirements for the filing of counterstatements and the submission of evidence. If foreign documents are relied upon, Chinese translations should be provided.

The party making the claim shall have the burden of proof. A foreign party that has permanent offices in China may act as its own counsel or appoint a designated trademark agency to represent it.

Kenny Wong, Johnson Stokes & Master, Hong Kong

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