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February 2017
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Provisions of the Supreme People's Court on Several Issues Concerning the Hearing of Administrative Cases on Granting and Affirming Trademark Rights

On January 11, 2017, Song Xiaoming, Chief Judge of Intellectual Property Rights Tribunal of the Supreme People's Court released to the press the Provisions of the Supreme People's Court on on Several Issues Concerning the Hearing of Administrative Cases on Granting and Affirming  Trademark Rights (hereinafter referred to as the Provisions). The Provisions consisting of 31 Articles are mainly related to the substantive contents such as the scope  of examination, the determination of distinctiveness, and the protection of well-known trademark, protection of the prior rights such as  copyrights and the right of name, and the procedural contents such as the violation of legal procedures and the principle of non bis in idem, and provide interpretation about the significant and difficult issues concerning administrative cases involving granting and affirming trademark rights in the judicial practice. The Provisions will take effect on March 1, 2017.

The Provisions highlights four aspects as below:

First, the Provisions made explanations and interpretations of several articles to clarify their respective scope in compliance with the original legislative intention of the Trademark Law. For example, the Provisions clarifies that “being identical with or similar to the State name of the People’s Republic of China” in Article 10.1.1 shall mean that a trademark is identical with or similar to the State name, etc. on the whole shall not be used as trademark, and “those detrimental to social morals or customs, or having other negative influences shall not be used as trademarks” in Article 10.1.8 shall mean that a trademark shall not be used as trademark provided the State name is part of the trademark and the trademark is not identical or similar to the State name on the whole and where elements of the logo may have negative or adverse impact on China’s national dignity. For another example, the Provisions identified the distinction in Article 5 and Article 24 about the difference of the “other negative effects” prescribed in Article 10.1.8 and “other improper means” prescribed in Article 44.1, holding that the two terms respectively apply to situations where public interests and orders may be adversely affected and where trademark registration order is disturbed, the public interests is harmed, public resources are improperly dominated and unjustifiable benefits are sought through improper means other than deceptions and that the acts that only harm specific civil rights and interests should not be applied to the above two Articles. Also, the Provisions clarifies in Article 5 and Article 16 about the scope of “Agent or Representative” prescribed in Article 15.1 and “Other Relationships or Connections other than contractual and/or business relations” in Article 15.2 of the Trademark Law.

Second, the Provisions further enhanced the Principle of Good Faith to protect prior rights and restrain malicious trademark squatting. In Article 7 of the 2013 Trademark Law, the Principle of Good Faith is explicitly prescribed as a fundamental rule to be followed in registration and application of a trademark. Such legislative intention is fully demonstrated and represented in the Provisions with regard to the application of the Trademark Law so as to protect sincere and honest business and guard against malicious trademark squatting. For example, to deal with the malicious trademark squatting by the interested party of the agents or the representatives in judicial practice, the Article 15.3 of the Provisions prescribed that “where trademark applicants enjoy family relationship or other specific connections with agents or representatives, they can be presumed malicious in handling registration through their agents or representative, and the court shall hear the case in accordance with Article 15.1 of the Trademark Law. Under such circumstances, the trademark applicants maliciously collaborated with the agents or representatives can be treated as agents or representatives in an effort to give force to Article 15.1 of the Trademark Law in restraining malicious trademark squatting. In addition, Article 18-22 of the Provisions stipulated the application of prior rights including prior copyright, name right, right to a trade name and right to a character image. Infringement upon the name right is under the spotlight, which relates to the acts of applying to register names of other parties as trademarks and using such trademarks without approval in trademark cases. The Provisions affirmed the infringement upon names in Article 20.1 from the perspective of that “The relevant public may associate the trademark to the name of a natural person and may recognize that the products with such trademarks are authorized by the natural person or associated with the natural person”. However, in practice, some cases involve claiming name rights for such specific names as pennames, stage name or translated name rather than names used on their ID card. For this, the Article 20.2 of the Provisions stipulates that the court shall uphold such claims provided the specific names are well known to certain public and are consistently associated to the natural person and provided that the public refer the name to the natural person. Therefore, the court can make a decision over whether the application of the disputed trademark is infringing upon the name rights based on the Article 20.1.

Third, the Provisions explained and provided guidance on determining the scope and content of “prior rights” prescribed in Article 32 of Trademark Law. Copyright including character image, individual name rights including its ID name, nickel name, stage name, trade name, name of Works and character name in the Works of high fame are specified as rights that could be protected. For example, Article 22.2 of the Provisions involves the protection of names and characters in works, stipulating that “Provided the names and characters in works that are still protected by copyright are well known, the use of such names on products concerned may mislead the public that the names are used with the permission of obliges or specifically associated to the obliges. The court shall uphold claims by parties concerned for prior rights and interests.”

Forth, the Provisions will facilitate judicial examination, substantially improve the efficiency of the procedures in granting and affirming trademarks. According to Article 2 of the Provisions, the scope of the examination by court in granting and affirming trademarks is usually determined by the claims and cause of actions of the plaintiff. Where the plaintiff fails to claim and TRAB affirms the obviously improper act, the court can examine concerned causes and makes its judgment. Such practice represents the characteristics of the trademark administrative cases and displays a philosophy of advocating judicial procedures and preventing waste of judicial resources. Meanwhile, as prescribed in the Article 30 of the Provisions, the court shall refuse to accept where the people’s court have already explicitly affirmed relevant facts and matters related to legal application in its effective judgments, and where the party concerned brings legal proceedings against the new decision made by the Trademark Review and Adjudication Board according to the effective judgment. And, for those cases accepted, the court shall make a decision to dismiss the lawsuit. However, this Article is not applicable provided the ruling made by TRAB introduces new facts or reasons. Such rules is conducive to avoid circulation lawsuit.

Besides, the Provisions also involves the trial standards and rules of many other significant legal issues, such as the determination on possible confusion caused by the marks in dispute and the judgment on the ownership of copyright, etc. The Provisions is a critical measure by the Supreme Court to summarize its experience in practical trial and improve application standards of granting and affirming trademarks. The release and implementation of the Provisions will facilitate a better order in trademark application and registration.