<The Supreme People's Court's Regulations on Several Problems regarding Trial of an Administrative Case with respect to Authorization and Right Confirmation of a Trademark> was passed by the Supreme People's Court's Judicial Committee No. 1703 Conference on December 12, 2016, now is hereby promulgated, and will be implemented on March 1, 2017.

Supreme People's Court
January 10, 2017


Fa Shi (2017) No. 2

Supreme People's Court's Regulations on Several Problems regarding Trial of an Administrative Case with respect to Authorization and Right Confirmation of a Trademark

In order to correctly try an administrative case with respect to authorization and right confirmation of a trademark, according to the Trademark Law of the People's Republic of China, the Administrative Procedure Law of the People's Republic of China and other legal provisions, these Regulations are formulated by combining with trial practice.

Article 1  "An administrative case with respect to authorization and right confirmation of a trademark" mentioned in these Regulations refers to a case for which a relative person or an interested person institutes legal proceedings with a people's court due to dissatisfaction with administrative actions of the trademark review and adjudication board of the administrative department for industry and commerce under the State Council (hereinafter referred to as "Trademark Review and Adjudication Board") such as reexamination on trademark rejection, reexamination on that a trademark is not approved for registration, reexamination on trademark withdrawal, declaration of invalidation of a trademark and reexamination on declaration of invalidation, etc.

Article 2  The scope for a people's court to examiner an administrative action with respect to authorization and right confirmation of a trademark should be determined generally based on a plaintiff's litigation claims and reasons. If the plaintiff does not raise a claim in the litigation but the relevant affirmation of the Trademark Review and Adjudication Board is obviously improper, the people's court can examine relevant particulars of a matter and make a judgment after the parties state opinions.

Article 3  "Same as or similar to" the country name, etc. of the People's Republic of China as set out in Article 10.1.1 of the Trademark Law refers to that a trademark mark is same as or similar to the country name, etc. on the whole.

For a mark which contains the country name, etc. of the People's Republic of China but is not same or similar on the whole, if the registration of such mark as a trademark may cause damages to national dignity, the people's court can affirm that it belongs to a situation as set out in Article 10.1.8 of the Trademark Law.

Article 4  If a trademark mark or its constituent elements has/have fraudulence, which is easy to make the public mistakenly view the quality of commodities and other features or the place of origin, the Trademark Review and Adjudication Board will affirm that it belongs to a situation as set out in Article 10.1.7 of the Trademark Law amended in 2001, the people's court will support such affirmation.

Article 5  If a trademark mark or its constituent elements may have negative or adverse effects on social public interests and public order of our country, the people's court can affirm it belongs to "other undesirable effects" as set out in Article 10.1.8 of the Trademark Law.

Application for registration of a public figure's name in the field of politics, economy, culture, religion and nationality, etc. as a trademark belongs to "other undesirable effects" mentioned above.

Article 6  A trademark mark consists of a geographical name of an administrative division at or above the county level or a foreign geographical name known to the public and other elements, if it has a meaning differing from the geographical name on the whole, the people's court should affirm it does not belong to the situation mentioned in Article 10.2 of the Trademark Law.

Article 7  When examining whether a litigious trademark has a distinguishing feature, the people's court should judge whether the trademark has a distinguishing feature on the whole based on general understanding of relevant public on commodities on which use of the trademark is designated.  If a descriptive element is contained in a trademark mark but does not affect its distinguishing feature on the whole; or if a descriptive mark is embodied in a unique way such that relevant public can identify the commodity source via such mark, the people's court should affirm it has a distinguishing feature.

Article 8  If the litigious trademark is a mark in a foreign language, the people's court should examine and judge whether such trademark in a foreign language has a distinguishing feature based on general understanding of relevant public within China. The inherent meaning of the foreign language in the mark may affect its distinguishing feature on a commodity on which use of the mark is designated, but if the relevant public has a low cognitive degree on the inherent meaning and can identify the commodity source via such mark, the people's court should affirm it has a distinguishing feature.

Article 9  If only the shape of a commodity itself or a part of the shape itself as a three-dimensional mark is applied for registration of a trademark such that normally it is not easy for relevant public to identify it as an indicated commodity source mark, such three-dimensional mark does not have a distinguishing feature as a trademark.

The shape is originally created by the applicant or is used earliest by the applicant, but cannot certainly cause it has a distinguishing feature as a trademark.

The mark mentioned in provision 1 has been used for a long time or widely, if relevant public can identify the commodity source via such mark, it can be affirmed that the mark has a distinguishing feature.

Article 10  If a litigious trademark belongs to a statutory commodity name or a conventionalized commodity name, the people's court should affirm that it belongs to a common name mentioned in Article 11.1.1 of the Trademark Law. If it belongs to a common commodity name according to laws, national standards or industrial standards, it should be affirmed as a common name. If relevant public generally considers that a certain name can refer to a class of commodity, it should be affirmed as a conventionalized common name. If it is listed as a commodity name by professional reference books and thesaurus, etc., it can be affirmed as a reference of a conventionalized common name.

For a conventionalized common name, general understanding of relevant public throughout the country is normally taken as a judgment standard. For a fixed commodity in a relevant market formed due to historical tradition, local customs and practices and geographical environment, etc., it has a common appellation in such relevant market, the people's court can affirm it as a common name.

If the applicant of a litigious trademark clearly knows or should know that the trademark applied for registration is a conventionalized commodity name in some regions, the people's court can regard the trademark applied for registration to be a common name.

When the people's court examines and judges whether a litigious trademark belongs to a common name, the factual status on the trademark application date generally not prevails. If the factual status changes when approving registration, whether it belongs to a common name is judged as per the factual status changes when approving registration.

Article 11  If a trademark mark is only or mainly used to describe or explain quality, main raw materials, functions, purpose, weight, quantity and place of origin, etc. of the used commodity, the people's court should affirm that it belongs to a situation as set out in Article 11.1.2 of the Trademark Law. If a trademark mark or its constituent elements implies/imply the characteristics of a commodity but does not affect the function of identifying the commodity source, it does not belong to a prescribed situation.

Article 12  If a party claims according to Article 13.2 of the Trademark Law that a litigious trademark constitutes a copy, imitation or translation of its unregistered famous trademark and thus should not be registered or should be invalidated, the people's court should affirm whether it is easy to cause confusion after comprehensively considering the following factors and mutual effects among the factors:

(1) degree of approximation of trademark marks;

(2) degree of similarity of commodities;

(3) significance and awareness degree of a trademark to be claimed;

(4) degree of attention of relevant public;

(5) other relevant factors.

The trademark applicant's subjective intention and evidence for actual confusion can serve as reference factors for judging likelihood of confusion.

Article 13  If a party claims according to Article 13.3 of the Trademark Law that a litigious trademark constitutes a copy, imitation or translation of its registered famous trademark and thus should not be registered or should be invalidated, the people's court should comprehensively consider the following factors to affirm whether use of the litigious trademark is sufficient to make relevant public consider there is a relation of a significant degree between it and the famous trademark, thus misleading the public and causing possible damages to the interests of the trademark registrant:

(1) significance and awareness degree of a cited trademark;

(2) whether trademark marks are sufficiently similar;

(3) status of the designated commodity for use;

(4) degree of overlap and degree of attention of relevant public;

(5) situation in which a mark similar to a cited trademark is legally used by other market entity, or other relevant factors.

Article 14  Where a party claims that a litigious trademark constitutes a copy, imitation or translation of its registered famous trademark and thus should not be registered or should be invalidated, the Trademark Review and Adjudication Board rules to support its claim according to Article 30 of the Trademark Law, if registration of the litigious trademark is less than five years, the people's court can conduct a trial according to Article 30 of the Trademark Law after the parties state opinions; if registration of the litigious trademark is more than five years, the trial shall be applied to Article 13.3 of the Trademark Law.

Article 15  Where a trademark agent, a representative or an agent, a representative in the sense of a sales agency relationship such as distribution and agency, etc., in his/her own name and without authorization, applies for registration of a trademark same as or similar to a trademark of a principal or a representee on a same or similar commodity, the people's court will conduct a trial according to the provisions of Article 15.1 of the Trademark Law.

In the consultation stage for establishing an agency or representative relationship, where the agent or representative as set out above applies for registration of a trademark of a principal or a representee, the people's court will conduct a trial according to the provisions of Article 15.1 of the Trademark Law.

Where a trademark applicant has a specific identity relationship such as kinship, etc. with an agent or a representative, it can be assumed that the trademark registration behavior is malicious conspiracy with such agent or representative, the people's court will conduct a trial according to the provisions of Article 15.1 of the Trademark Law.

Article 16  The following circumstances can be affirmed as "other relations" as set out in Article 15.2 of the Trademark Law:

(1) there is a kinship between a trademark applicant and a prior user;

(2) there is a labor relation between a trademark applicant and a prior user;

(3) business addresses of a trademark applicant and a prior user are adjacent;

(4) a trademark applicant and a prior user had carried out consultations in terms of entering into an agency or representative relationship, but the agency or representative relationship failed to be formed;

(5) a trademark applicant and a prior user had carried out consultations in terms of entering into a contractual or business transaction relationship, but the contractual or business transaction relationship failed to be entered into.

Article 17  Where an interested person for a geographical mark, according to Article 16 of the Trademark Law, claims that a trademark of another person should not be registered or invalidated, if a commodity on which use of the litigious trademark is designated and a geographical mark product are not same commodities, and the interested person for a geographical mark can prove that use of the litigious trademark on such product is still easy to cause relevant public to mistakenly consider such product originates from this region and therefore it has specific quality, reputation or other feature, the people's court will support.

If the geographical mark has been registered as a collective trademark or a certification trademark, the right holder or interested person of the collective trademark or the certification trademark can select to advocate rights according to this Article or separately according to Articles 13, 30, etc. of the Trademark Law.

Article 18  A prior right as set out in Article 32 of the Trademark Law includes a party's civil rights entitled prior to the litigious trademark application date or other lawful rights and interests which should be protected. If the prior right no longer exists when approving for registration of the litigious trademark, registration of the litigious trademark is not affected.

Article 19  Where a party claims a litigious trademark damages its prior copyright, the people's court should, according to the Copyright Law and relevant regulations, examine whether the claimed object constitutes works, whether the party is the copyright owner or whether other interested person who has the right to claim the copyright and the litigious trademark constitute infringement of the copyright, etc.

If a trademark mark constitutes works protected by the Copyright Law, the design manuscript, the original copy, the contract for acquisition of rights, the copyright registration certificate prior to the litigious trademark application date, etc. where are related to the trademark mark and submitted by the party can serve as preliminary evidence proving ownership of the copyright.

A trademark public announcement and a trademark registration certificate, etc. can serve as preliminary evidence for determining the trademark applicant is an interested person who has the right to claim trademark mark copyright.

Article 20  Where a party claims a litigious trademark damages its name right, if relevant public considers the trademark mark refers to this natural person and it is easy to consider that a commodity marked with this trademark is permitted by this natural person or has a specific relation with this natural person, the people's court should affirm that this trademark damages the name right of this natural person.

Where the party claims a name right by using a specific name such as its pen name, stage name or translated name, etc., such specific name has certain popularity and has established a stable corresponding relation with this natural person, and relevant public uses this specific name to refer to this natural person, the people's court will support.

Article 21  Where a name claimed by a party has certain market popularity, another person applies for registration of a trademark same as or similar to this name without permission, which is easy to cause confusion of relevant public on the commodity source, and the party thereby claims to constitute prior rights and interests, the people's court will support.

If the party raises a claim on the basis of the abbreviation of the enterprise name which has certain market popularity and has established a stable corresponding relation with the enterprise, the preceding provision shall apply.

Article 22  If a party claims a litigious trademark damages the role image copyright, the people's court shall conduct examinations according to Article 19 of these Regulations.

For works within the term of protection for the copyright, if the name of the works or a role name in the works, etc. has higher popularity, use of it as a trademark on relevant commodities is easy to cause relevant public to mistakenly consider it is permitted by the right holder or has a specific relation with the right holder, and the party thereby claims to constitute prior rights and interests, the people's court will support.

Article 23  Where a prior user claims that the trademark applicant, through improper means, conducted a rush registration of its trademark which is first used and has certain influence, if the prior-use trademark has had certain influence, and the trademark applicant clearly knows or should know this trademark, it ca be assumed that it constitutes "rush registration through improper means". However, the situation that the trademark applicant puts to the proof to prove it has no malice of using the prior-use trademark reputation is excluded.

Where a prior user puts to the proof to prove its prior trademark has certain time of continuous use, regions, sales volume or advertising, the people's court can affirm it has certain influence.

Where a prior user claims that a trademark applicant applies for registration of a trademark which is first used by the prior user and has certain influence on a commodity which is not similar to it, violating the provisions of Article 32 of the Trademark Law, the people's court shall not support.

Article 24  Where a person, in other ways other than deception, disturbs the trademark registration order, damages public interests, improperly occupies public resources or seeks unjust interests, the people's court can affirm it belongs to "other improper means" as set out in Article 44.1 of the Trademark Law.

Article 25  When judging whether a litigious trademark applicant "maliciously registers" a famous trademark of another person, the people's court should comprehensively consider the popularity of a cited trademark, the reasons for the litigious trademark applicant to apply for the litigious trademark and detailed situations of using the litigious trademark to judge its subjective intention. If the cited trademark has high popularity and the litigious trademark applicant has no good reason, the people's court can assume its registration constitutes "malicious registration" mentioned in Article 45.1 of the Trademark Law.

Article 26  Use by a trademark owner at its own discretion, use with another person's permission and other use which does not go against the trademark owner's will can be affirmed as use mentioned in Article 49.2 of the Trademark Law.

Where an actually used trademark mark slightly differs from a trademark mark which is approved for registration, but does not change its distinguishing feature, it can be regarded as use of a registered trademark.

Where a registered trademark is not actually used, there is only a transfer or licensing action; or the trademark registration information is only published or entitlement to the exclusive right of using a registered trademark is declared, use of a trademark is not affirmed.

Where a trademark owner has a true intention to use a trademark and has necessary preparations for actual use, but has not actually used the registered trademark due to other objective reasons, the people's court can affirm it has a due cause.

Article 27  Where a party claims before the Trademark Review and Adjudication Board the following situations belong to "violation of legal procedures" as set out in Article 70.3 of the Administrative Procedural Law, the people's court shall support:

(1) the reasons for review as raised by the party are omitted, which have actual impacts on the party's rights;

(2) the members of the collegial panel are not informed during review procedures, and upon examination, there is indeed a reason for avoidance but avoidance fails;

(3) a qualified party is not informed to attend review, such party expressly raises an objection;

(4) other situations which violate legal procedures.

Article 28  Where during a people's court's trial of an administrative case with respect to authorization and right confirmation of a trademark, if the cause for the Trademark Review and Adjudication Board to reject a litigious trademark, not approve for registration of the litigious trademark or announce invalidation of the litigious trademark does not exist, the people's court can withdraw relevant rulings of the Trademark Review and Adjudication Board based on new facts, and order it to anew make a ruling based on changed facts.

Article 29  A review application raised by a party based on newly discovered evidence after the original administrative act, or evidence which cannot be obtained due to objective reasons during original administrative procedures or cannot be provided within the specified time limit, or based on a new legal basis does not belong to anew raising a review application as per "the same facts and reasons".

During trademark rejection reexamination procedures, after approving announcement of the preliminary approval for an applied trademark, the Trademark Review and Adjudication Board will anew raise a review application for the reason that the applied trademark and the cited trademark do not constitute same or similar trademarks used on same one commodity or similar commodities, the following situations are not regarded as "as per the same facts and reasons":

(1) the cited trademark owner or interested person raises an objection based on this cited trademark, the Trademark Office of the administrative department for industry and commerce under the State Council supports it, the opposed trademark applicant applies for a reexamination;

(2) the cited trademark owner or interested person applies to announce its invalidation based on this cited trademark after the applied trademark is approved for registration.

Article 30  Where the people court's effective judgment has made a clear affirmation on relevant facts and law application, if a relative person or interested person institutes legal proceedings regarding a ruling anew made by the Trademark Review and Adjudication Board based on this effective judgment, the people's court rules not to accept according to law; if accepted, rules to dismiss the lawsuit.

Article 31 These Regulations are implemented on March 01, 2017. For an administrative case with respect to authorization and right confirmation of a trademark which is tried by a people's court according to the Trademark Law amended in 2001, these Regulations can be referred to and applied.