Anna Mae Koo

Anna Mae Koo

Ann Xu

Ann Xu

Below are the top 10 updates from the China Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB) from the past year, which brand owners should be aware of.

Greater transparency of TRAB decisions
As of December 2017, all TRAB decisions have been published online, where they are now searchable. New decisions will be published approximately one month from the date of the decision.

This provides greater transparency over the rulings of the TRAB and allows the board to adopt a more consistent approach. However, as the public now have access to the relevant arguments put forward, appellants should be more cautious in preparing arguments to ensure that they are consistent with related cases.

Greater use of precedent
Judge Yang Jing of the Beijing IP Court provided guidelines regarding the use of precedent in an article published in the People’s Court Daily in July 2017. She pointed out that no more than three precedential cases, each with a summary of less than 800 words, should be used and submitted for each argument. Cases should be exchanged between the parties seven days before the hearing.

Stricter requirements for court formality documents
In 2017 the Beijing IP Court adopted more stringent requirements for formality documents. Common issues faced by companies include:

  • difficulty in proving that the person signing the certificate of identity of legal representative has been duly authorised (Issue 1); and
  • that company documents cannot be retrieved from the relevant government registry (Issue 2).

Failure to abide by these requirements will lead to the case being abandoned. Below are some solutions from other jurisdictions.

Jurisdiction

Solution

United States (Delaware, New York and California)

Issue 1: Delegation of authority signed by the managing director authorising a person (usually another senior executive) to sign the certificate. A certificate signed by an individual who is authorised by the by-laws to sign on behalf of the company may be accepted.

 

Issue 2: For listed companies, company documents may be retrieved from the US Securities and Exchange Commission.

United Kingdom

Issue 1: A certificate may be signed by director(s), together with a copy of Section 44 of the Companies Act 2006, which states that a document is validly executed by a company if it is signed by a director in the presence of a witness.


Stricter well-known status requirements
A high-profile anti-corruption case involving the inappropriate award of 10 trademarks with well-known status in Guangzhou was concluded last year and widely reported in March 2018. As such, the CTMO has become cautious and conservative in granting well-known status to trademarks and re-approving previously well-known trademarks.

Brand owners should rely on other grounds, such as bad faith or prior rights, as well as establishing a relationship with the trademark squatter, to obtain a favourable ruling.

E-filing more broadly available
Through e-filing, brand owners can access application numbers within one working day and file receipts within one month, in contrast to the three to six months for paper filings. This is important for brand owners which need to use an application number to enter e-commerce platforms, such as Tmall.

However, e-filing is applicable only to trademark filings or licence recordals which use standard specifications of goods and services. The e-filing system does not apply to applications filed under the Madrid System.

Importance of new filings
When filing opposition, invalidations or non-use cancellations against a third party’s prior mark, brand owners should remember to file the subject mark simultaneously; otherwise, their mark may be re-filed by a third party.

Further, the TRAB will not suspend the examination to wait for the outcome of any actions. New filings should be made to reserve rights.

Relying on prior rights
Since well-known status is difficult to obtain, brand owners may look to establish prior rights to bolster their actions. Copyright is especially useful as it is a cost-effective defensive mechanism against other marks and is not class-specific.

Faster examination timeframe
The CTMO and the TRAB have generally complied with regulatory requirements for examination timelines, with the CTMO now looking to further speed up examinations. New examination centres have been established in Guangzhou, Shanghai and Chengdu in recent months. The current examination timeframes are outlined below.

Item

Timeframe

Filing receipt

Four to six months

Assignment

10 to 12 months

TRAB appeal

Review on refusal

Six to eight months

Non-use cancellation review

Nine to 12 months

Invalidation application

11 to 14 months

Opposition review

11 to 14 months


Consolidation of administration and enforcement of IP rights
In March 2018 the National People’s Congress approved the proposal to restructure agencies under the State Council, which includes:

  • the State Intellectual Property Office (SIPO) taking over registration of trademarks and geographical indications; and
  • a new State Administration for Market Supervision (SAMS), which will preside over the SIPO. SAMS will also be responsible for enforcement of patents and trademarks.

This is a significant structural change, unifying the offices that administer patents, trademarks and copyrights. The restructuring is not yet complete, but has caused some confusion over the responsible officers – this should be cleared up in the coming months.

Fighting bad faith and other dishonest behaviour
The CTMO has announced potential additional measures to stem trademark squatting, including the development of a database of bad-faith trademark applicants, which may be used as evidence of bad faith in the future.

For further information please contact:

Anna Mae Koo
Vivien Chan & Co
www.vcclawservices.com
Email: annamae.koo@vcclawservices.com
Tel: +852 2522 9183