New guidelines for examining and ascertaining trademark rights in administrative cases

The Beijing Higher People’s Court has issued a new set of guidelines for examining and ascertaining trademark rights in administrative appeals and proceedings filed with the court against decisions of the Trademark Review and Adjudication Board (TRAB) under the new Trademark Law, effective May 1 2014.

The guidelines consist of 30 articles covering five major issues:

• the recognition and protection of well-known trademarks;
• the recognition and protection of geographical indications;
• the determination of consumer confusion;
• the protection of prior rights, including rights in personal names and copyright; and
• procedural matters.

The highlights of the guidelines are as follows:

• In disputing a third-party trademark, the relevant date for the petitioner to claim and prove well-known recognition of its prior mark is the filing date of the disputed mark. Only when this prerequisite is met (ie, when the petitioner’s prior mark is recognised as well known) will the court consider other issues, such as:
  • whether the disputed mark constitutes an imitation of the prior mark;
  • the extent of consumer confusion; and
  • potential damages caused to the well-known mark owner.
• A petitioner cannot, based on its prior registered ordinary trademark, oppose or invalidate a geographical indication or collective trademark.
• In claiming that a disputed unregistered mark is distinguishable from an earlier mark by virtue of prior use, such use must be continuous and precede the filing date of the earlier mark to be established by evidence. When considering the likelihood of confusion in the circumstances, the court should take into account evidence submitted respectively by the owners of the disputed and earlier marks, as well as the subjective status of the disputed mark owner (eg, its good or bad faith). Market surveys (containing prescribed elements) are expressly allowed as evidence in showing whether the marks concerned are distinguishable.
• Registration of the name of a public (political, religious or historical) figure may constitute “other negative influence” and therefore will be disallowed. The court will not consider the registration of the name of a living natural person to fall under this category.
• Whether a device mark constitutes a copyright work shall be governed by the Copyright Law. The design drawings, copyright registration certificate, commission agreements and copyright assignment agreements of the device can serve as preliminary evidence for determination of its copyright ownership. Any copyright registration certificate obtained after the commencement of the opposition or invalidation proceedings concerned is per se insufficient to prove copyright ownership.
• An opposed application may be refused registration – even though its owner has not yet been liquidated, but only revoked – if the following conditions are met:
  • The business licence of the owner of the opposed mark has been revoked for more than three years when the administrative decision is made;
  • There is no evidence showing that the opposed mark has been assigned or licensed to others;
  • The owner of the opposed mark has neither participated in the TRAB and subsequent proceedings nor made any statement on its corporate status or the opposed mark; and
  • The opposed mark is an imitation or copy of the earlier mark and the designated goods are related.

The new guidelines give more certainty to trademark administrative proceedings. While they are not binding on the Chinese Trademark Office and the TRAB, it is hoped that these authorities will take them into account when adjudicating contentious trademark matters.