SPC issues interpretation on jurisdiction and application of amended Trademark Law

China

The Supreme People’s Court has issued its interpretation on issues of jurisdiction and the application of the amended Trademark Law. This interpretation came into effect on May 1 2014.

Three additional types of trademark cases over which the People’s Court has jurisdiction have been added, namely:

  1. cases involving a declaratory judgment for non-infringement of the exclusive right to use a trademark;
  2. cases involving a contractual dispute over a trademark agency appointment; and
  3. cases involving the liability for damages resulting from an application to cease infringement of the exclusive right to use a trademark.

The manner in which the amended Trademark Law will be applied is set out in the table below. The authors have added comments in parenthesis to help clarify the circumstances described in the articles.

 Article

 Type of case

Law to be applied by the People's Court

Article 5             

Application to register or renew a trademark filed before May 1 2014. The China Trademark Office (CTMO) issues decision refusing to accept the application (on formality issues) or the renewal after May 1 2014. Administrative litigation proceedings instituted before the People’s Court

Amended law

Article 5 

Application to oppose a trademark filed before May 1 2014. The CTMO issues decision refusing to accept the opposition (on formality issues) after May 1 2014. Administrative litigation proceedings instituted before the People’s Court

Previous law

Article 6

Application for review at the Trademark Review and Adjudication Board (TRAB) of an appeal against the refusal of a trademark or opposition filed before May 1 2014. The TRAB issues decision after May 1 2014. Administrative litigation proceedings instituted before the People’s Court

Amended law

Article 6 

The TRAB allows the registration of the opposed mark in the opposition appeal after May 12014. The opponent institutes administrative proceedings

The case will be dismissed

Article 6 

Application for review at the TRAB of an appeal against the refusal of a trademark or opposition filed before May 1 2014. The TRAB decides not to approve the registration after May 1 2014. Administrative litigation proceedings instituted before the People’s Court. Examination of right to institute litigation and legal standing (of opponent)


Previous law

Article 7 

Application in relation to a registered trademark (cancellation) filed before May 1 2014. The TRAB accepts case before May 1 2014, but makes a decision after May 1 2014. Administrative litigation proceedings instituted before the People’s Court

Examination of procedural issues by the People’s Court - amended law

Examination of substantive issues by the People’s Court - previous law

Article 8

Trademark cases accepted before May 1 2014. The CTMO or the TRAB makes a decision after May 1 2014. Administrative litigation proceedings instituted before the People’s Court

Calculate statutory time limits for examination from  May 1 2014 

Article 9 

Civil trademark cases accepted by the People’s Court after May 1 2014, but the acts took place before May 1 2014

For acts which took place before May 1 2014, but continued after May 1 2014

Previous law

Amended law 

The Administration for Industry and Commerce's implementation of the amended Trademark Law

Article

Type of case

Law to be applied by the CTMO or the TRAB

Article 1.1 

CTMO decision concerning an application, opposition, change of name or address, renewal or cancellation filed before the implementation of the amended law. CTMO decision issued after May 1 2014

Amended law

but legal standing of opponent and legal grounds based on previous law

Article 1.2 

For application, opposition or cancellation filed before May 1 2014, calculate statutory time limits for examination from May 1 2014  

But if there is less than three months from the date a trademark is published for opposition purposes to May 1 2014, calculate statutory time limit for examination from the completion of the three-month opposition period
 

Article 2.1 

Appeal to the TRAB against the refusal of trademark application filed before May 1 2014, but examined after May 1 2014

Amended law

Article 2.2 

Appeal to the TRAB against an opposition filed before May 2014, but examined after May 1 2014

Legal standing of opponent - previous law

Procedural and substantive issues - amended law

Article 2.3 

Non-use cancellation appeal and improper registration cancellation filed with the TRAB before May 1 2014, but examined after May 1  2014

Procedural issues – amended law

Substantive issues - previous law

Article 2.4 

All cases filed before the TRAB before May 1 2014

Calculate statutory time limits for examination from May 1 2014 

Rachel Tan and Hatty Cui, Rouse, Beijing

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