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Regulations of the Supreme People’s Court on Several Issues Concerning Trials of Cases of Granting and Affirming Trademark Right


Regulations of the Supreme People’s Court on Several Issues Concerning Trials of Cases of Granting and Affirming Trademark Right, as adopted at the 1703th Session of the Judicial Committee of the Supreme People's Court on December 12, 2016, are hereby issued, and shall come into force on March 1, 2017.

 Supreme People’s Court
 January 10, 2017 


Interpretation No. 2〔2017〕
Of the Supreme People’s Court
On Several Issues Concerning Trials of Cases of Granting and Affirming Trademark Right
(adopted at the 1703th Session of the Judicial Committee of the Supreme People's Court on December 12, 2016, are hereby issued, and shall come into force on March 1, 2017)

 

In order to accurately try the cases of granting and affirming trademark right, the Regulations are formulated according to the provisions of the Trademark Law of People’s Republic of China and the Administrative Procedure Law of the People's Republic of China with combination of practice of trials.

Article 1 The cases of granting and affirming trademark right mentioned in the Regulations refer to litigations filed by a counterpart or a party with the people’s court due to out of dissatisfaction with the administrative acts by the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce (hereafter referred as Trademark Review and Adjudication Board), including review of rejection of trademark application, review of trademark opposition, review of trademark cancellation, invalidation and review of invalidation.

Article 2 The scope of examination on administrative actions of granting and affirming trademark right shall generally be determined by the people’s court, according to the plaintiff’ s claims and reasons. For claims not being raised by the plaintiff during litigation, yet if the relevant decisions made by Trademark Review and Adjudication Board have obvious mistakes, the people’s court could examine the relevant issues and make judgments , after the parties present their statement.

Article 3 Trademarks “identical with or similar to” the state name of the People’s Republic of China stipulated in the paragraph 1 of Article 10 (1) of the Trademark Law refer to those trademarks that are identical with or similar to the state name in overall appearance.

For trademarks containing the state name of the People’s Republic of China yet not identical with or similar to the state name in overall appearance, if the registration of such trademarks may lead to impairments of the dignity of the state name, the people’s court may determine that such trademarks constitute the conditions stipulated in the paragraph 8 of Article 10 (1) of the Trademark Law.

Article 4 Where trademarks or their composing elements is deceive, which shall easily mislead the relevant public regarding the quality and other characteristic or the origin, and the trademark Review and Adjudication Board determines such trademarks constitute the circumstances stipulated in the paragraph 7 of Article 10 (1) of the Trademark Law revised in year 2001, the decision of the Trademark Review and Adjudication Board shall be sustained by the people’s court.
Article 5 Where trademarks or their composing elements may have negative influence on public interest and public order, the people’s court may determine that such trademarks constitute “having other unhealthy influences” stipulated in the paragraph 8 of Article 10 (1) of the Trademark Law.

Where the name and so forth of a public figure in the field of politics, economy, culture, religion and nationality etc. are registered as trademark, such trademark shall be determined as “having other unhealthy influences” stipulated in the aforementioned paragraph.

Article 6 Trademarks composed of administrative divisions at or above the county level or foreign geographic names known by the public and other composing elements, where their meanings are different from geographic names in general, the people’s court shall determine that such trademarks do not constitute circumstances stipulated in Article 10 (2) of the Trademark Law.

Article 7 On examining whether a trademark in dispute has distinctiveness, the people’s court shall base on the common sense of the relevant public regarding the goods bearing the trademark in dispute, to determine whether such trademarks, by and large, having distinctiveness or not. Where trademarks include descriptive elements, yet do not affect their distinctiveness in general, or the descriptiveness is expressed in an unique way and relevant public is likely to recognize the origin of the goods, such trademarks shall be determined as having distinctiveness.

Article 8 Where the trademark in dispute is a foreign mark, the people’s court shall examine its distinctiveness according to the common sense of the relevant public within the territory of China. The inherent meaning of the foreign mark may influence the distinctive characteristics when used on the goods bearing the trademark, however, if relevant public is of low awareness regarding the inherent meaning and they are likely to recognize the origin of the goods using that mark, such trademark may be determined as having distinctiveness.

Article 9 With only the shape or part of the shape of the goods being applied for a three dimensional trademark registration, by and large, which is not easy for the relevant public to identify it as to indicate the origin of the goods, such three dimensional mark shall not be deemed as having the distinctiveness as trademarks.

The three dimensional mark is originally created or firstly used by the applicant shall not inevitably result in such trademark having the distinctiveness as a trademark.

Where the trademark referred in the first paragraph has been used for a long time or widely used and the relevant public is able to recognize the origin of the goods from the trademark, it could be determined as having distinctiveness.

Article 10 Where the trademark in dispute is a legal or conventional name for the goods, the people’s court shall determine such trademark constitute the generic name stipulated in the paragraph 1 of Article 10 (1) of the Trademark Law. In accordance with the law or national standard, industry standards, should a name constitute a generic name, it shall be determine as a generic name. Where generally it is known to the relevant public that a certain name can refer to a kind of goods, such name shall be determined as conventional generic name. The goods’ names listed in references books and dictionaries may be used as reference in determination of conventional generic name.
On determining the conventional generic name, it usually takes the common sense of the relevant public nationwide as criterion for judgment. For the certain goods formed within the relevant market due to reasons of historical tradition, local customs and practices, geographic environment and so forth, whose name is fixed in the relevant market, the people’s court may deem such name as generic name.

Where the applicant of the trademark in dispute is or should be aware of the applied trademark is the conventional generic name in some regions, the people’s court may deem it as a generic name.

When to examine and judge whether the trademark in dispute constitutes a generic name, the people’s court usually shall base on the state of facts on application of the trademark. Where the state of facts changed at time of registration, the people’s court shall base on the state of facts at time of registration in determination of whether such trademark constitutes a generic name.

Article 11 Trademarks only or mainly describe or explain the quality, main materials, function, use, weight, quantity and origin of the goods bearing the trademark, the people’s court shall determine such trademarks constitute circumstances stipulated in the paragraph 2 of Article 11 (1) of the Trademark Law. Where the trademarks or their composing elements imply the characteristics of the goods, however, which do not affect their function of distinguishing the origin of the goods, this shall not constitute the aforementioned circumstances.

Article 12 Where the party claims according to Article 13 (2) that the trademark in dispute is a reproduction, imitation or translation of his/her unregistered well-known trademark and should be rejected for registration or invalidated, the people’s court shall determine whether confusion is likely to be caused, taking the following factors into consideration comprehensively:

1. Similarity of the trademarks;
2. Similarity of the goods;
3. Distinctiveness and popularity of the trademark requested for protection;
4. Degree of attention carried by the relevant public;
5. Other related factors.

The subjective intent of the trademark applicant and the evidence of actual confusion in practice may be taken into consideration as reference in the determination of possibility of confusion.

Article 13 Where the party claims according to Article 13 (3) that the trademark in dispute is a reproduction, imitation or translation of his/her registered well-known trademark and should be rejected for registration or invalidated, the people’s court shall consider the following factors comprehensively to determine whether the use of the trademark in dispute is likely to make the relevant public believe it is of a fair degree of connection to the well-known trademark, so as to mislead the public and bring damage to the interests of the registrant of the well-known trademark:

(1) Distinctiveness and popularity of the cited trademark;
(2) Whether the trademarks are similar enough;
(3) Situation of the designated goods;
(4) The degree of overlap among the relevant public and the degree of their awareness;
(5) Use situation of the marks similar to the cited trademark by other market entities or other related factors.

Article 14 Where the party claims that the trademark in dispute is a reproduction, imitation or translation of his/her registered well-known trademark and should be rejected for registration or invalidated, which supported by the Trademark Review and Adjudication Board according to Article 30 of the Trademark Law, if the registration of the trademark in dispute has not exceeded five years, after the parties present their statement, the people’s court may try the case according to Article 30 of the Trademark Law; if the registration of the trademark in dispute has exceeded five years, the court shall try the case according to Article 13 (3) of the Trademark Law.

Article 15 Where a trademark agent, representative or an agent and representative in distribution or sales, without authorization, apply for a trademark registration, which is identical with or similar to their principal’ s trademark under their own names, the people’s court shall apply Article 15 (1) to try the case.

During negotiations on establishing a relationship for agency or representative, the agent or representative prescribed as above applies his/her principal’s trademark for registration, the people’s court shall apply Article 15 (1) to try the case.

Where a trademark applicant has kinship relationship or other particular personal relationship with the agent or representative prescribed as above, the trademark application could be presumed as the result of collusion and conspiracy between the applicant and the agent or representative, the people’s court shall try the case in accordance with Article 15 (1) of the Trademark Law. 

Article 16 The following circumstances may be determined as “other relationship” stipulated in Article 15 (2) of the Trademark Law:

(1) The trademark applicant has kinship relationship with the prior user;
(2) The trademark applicant had employment relationship with the prior user;
(3) The trademark applicant is in the vicinity of the prior user;
(4) The trademark applicant was in the negotiation with the prior user for reaching distribution or agency, yet no such relationship was reached;
(5) The trademark applicant was in the negotiation with the prior user for reaching an agreement or a business relationship, yet no such agreement or relationship was reached.

Article 17 Where an interested party of a geographic indication claims according to Article 16 of the Trademark Law that other people’s trademark should be rejected for registration or invalidated, under the circumstance that the goods bearing the trademark in dispute and the goods bearing the geographic indication are not identical, but the interested party of the geographic indication could prove the use of the trademark in dispute on the goods is likely to mislead the relevant public to believe that the goods comes from the region of the geographic indication and hence has the particular quality, reputation or other characteristic, such claim shall be supported by the people’s court.

Where the geographic indication has been registered as collective mark or certification mark, the registrant or the interested party may choose to claim his/her rights according to this article or Article 13 and Article 30 of the Trademark Law.

Article 18 The prior right stipulated in Article 32 of the Trademark Law includes the civil rights enjoyed by the party before the application date of the trademark in dispute or other lawful rights which should be protected. Where the prior right no longer exists when the trademark in dispute is to be approved for registration, the registration of the trademark in dispute shall not be affected.

Article 19 Where the party claims that the trademark in dispute creates prejudice to his/her prior copyright, the people’s court shall examine whether the object claimed constitutes a work, whether the involved party is the copyright owner or whether it is an interested party that is entitled to claim copyright, and whether the trademark in dispute constitutes infringement against copyright in accordance with the relevant provisions of the Copyright Law.

Where the sign of the trademark constitutes the work protected by the Copyright Law, the draft of the design, the original work of design, contracts of acquisition of copyright, copy right registration certificate obtained before the application date of the trademark in dispute, etc., could be used as preliminary evidence to prove copyright ownership.

Trademark Gazette, Trademark Registration Certificates etc. could be used as preliminary evidence to confirm that the trademark applicant is the interested party who is entitled to claim copyright to the sign of the trademark.

Article 20 Where a party claims that the trademark in dispute harms his/her name right, and if the relevant public believes the name is indicating the natural person, which is easy to mislead the public to believe that the goods bearing the trademark is authorized by the natural person or there is a particular relation to the natural person, the people’s court shall determine that the trademark creates prejudice to the name right of the natural person.

Where the party claims name right to a particular name of him/her as pen name, stage name, translated name etc., which is of certain popularity and has established stable connection to that natural person, and the relevant public uses the particular name to refer to the natural person, such claim shall be supported by the people’s court.

Article 21 Where the trade name claimed by the party is of certain popularity in the market, other party applies a trademark for registration which is identical with or similar to the trade name without authorization, which is likely to mislead the relevant public on the origin of the goods, the party hence claims prior right based on the trade name, and such claim shall be supported by the people’s court.

Where the party claims right based on the short form of its enterprise name, which is of certain popularity and has established stable connection to the enterprise, the preceding paragraph shall apply.

Article 22 Where the party claims the trademark in dispute infringes his/her copyright to a character image, the people’s court shall try the case according to Article 19 of this Regulations.

For a work whose copy right is within the duration of protection, where the name of the work and the name of the character therein are of relatively high popularity, the use of which as a trademark on the relevant goods is likely to mislead the relevant public to believe it is authorized by the right owner or it has particular relationship with the right owner, Whereas the party claims the above as prior right and interests, such claim shall be supported by the people’s court.

Article 23 Where the prior user claims that the trademark applicant preemptively registers his/her prior used trademark of certain influence through unfair means, if the prior used trademark indeed has obtained certain influence and the trademark applicant is or should be aware of the prior used trademark, such registration application should be presumed as having constituted “preemptive registration through unfair means”, unless the applicant could adduce evidence to prove he/she does not use the business reputation of the prior used trademark with bad faith.

Where the prior user adduces evidence to prove the prior trademark has been consistently used in a certain period of time, in a certain region and has certain sales volume or advertisements, such claim shall be supported by the people’s court.

Where the prior user claims that the applicant files his/her prior used trademark of certain influence on dissimilar goods based on Article 32 of Trademark Law, such claim shall not be supported by the people’s court.

Article 24 Where the trademark applicant using means other than deception, for perturbing orders of trademark registration, harming public interests, occupying public resources in unjustified ways or seeking illegal profits, the people’s court may determine such means as “other unfair means” stipulated in Article 44(1) of Trademark Law.

Article 25 When judging whether the applicant of the trademark in dispute registers other’s well-known trademark with bad faith, the People’s Court shall comprehensively consider the reputation of cited trademarks, the applicant’s reasons for filing the trademark and the actual use situation of the trademark in dispute to judge the applicant’s subjective intention. Where the cited trademarks enjoy high popularity and the applicant of trademark in dispute has no justified reasons, the People’s Court shall presume the registration of such trademark constitutes “registration with bad faith” prescribed in Article 45(1) of China Trademark Law.

Article 26 The use of the trademark by its owner, by others through license or other means which are not against the owner’s will can be deemed as actual use prescribed in Article 49(2) of the Trademark Law.

Whereas there is slight difference between the actual used trademark and its registered specimen, however, this does not change the distinctive features of the trademark, whose use may be deemed as the use of the registered trademark.

Whereas there is no actual use of the registered trademark, mere assignment or license or mere publication of trademark registration information or mere announcement of enjoying exclusive right to use a registered trademark, such use shall not be deemed as use of the trademark.

Whereas the trademark owner has a real intention to use the trademark and has made necessary preparations for use, however, due to other objective reasons, he/she has not used the registered trademark yet. The people’s court may determine that the trademark owner has justified reasons.

Article 27 Where the party claims that the following acts of the Trademark Review and Adjudication Board constitute “violation of legal procedures” stipulated in Article 70 (3) of Administrative Procedure Law, such claim shall be supported by the people’s court.

(1) the grounds of adjudication claimed by the involved party being omitted, which affect the party’s right substantively;
(2) without notifying the members of the collegial panel during the adjudication. Upon examination, there is indeed circumstance requiring examiner’s withdrawal, yet he/she fails to withdraw;
(3) fail to notify a qualified party to attend the adjudication, and the party expressly raises an objection;
(4) Other acts which are in violation of legal procedures.

Article 28 During the people’s court’s trial of the cases of granting and affirming trademark right, if the cause of refusal, not approving the registration application or invalidation no longer exists, the people’s court may revoke the relevant decision made by the Trademark Review and Adjudication Board based on new facts and rule the Board to make a new decision according to the changed facts.

Article 29 Where the adjudication application is filed by the involved parties on the ground of the new evidence found after the original administrative acts or those evidence is not accessible in the original administrative procedure or cannot be provided within the required date caused by objective reasons, or on the ground of new legal basis, it is not to be deemed as “adjudication application on the same facts and reasons”.

Where the Trademark Review and Adjudication Board approves the preliminary publication of the applied trademark on the grounds that the applied trademark and the cited trademark do not constitute identical or similar trademarks on identical or similar goods during the review procedure of refusal of trademark application, the following circumstances are not to be deemed as “adjudication application on the same facts and reasons”:

(1) Where the owner or an interested party of the cited trademark raises an opposition based on the cited trademark and the opposition is supported by the Trademark Office, the applicant of the opposed trademark files a review;
(2) Where the owner or an interested party of the cited trademark files an invalidation based on the cited trademark after the applied mark is approved for registration.

Article 30 Where the relevant facts and application of law have been clearly determined by the people’s court in its effective judgment, if the counterparty or the interested party files a lawsuit against the decision remade by the Trademark Review and Adjudication Board according to the effective judgment, the people’s court may make a ruling not to accept the lawsuit; for the lawsuits which have been accepted, the court may make a ruling to dismiss the lawsuit.

Article 31 This Regulations will come into effect on March 1, 2017. The people’s court may refer to the Regulations when hearing the administrative cases of granting and affirming trademark right based on the Trademark Law revised in year 2001.

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