How can a right holder defend their legitimate rights when their trademark that has been used in the Chinese market for many years and has gained high popularity is preemptively applied for registration in China by others? If the preemptive trademark application is still in the three-month opposition period after preliminarily approved for registration, the best option for the right holder to safeguard their legitimate rights is to file an opposition against the preemptive trademark application within the statutory time limit and file their own trademark application as soon as possible. However, where the preemptive trademark application is rejected, if the preemptive applicant files a request for review so as to prolong the examination and thus pose a hurdle to the right holder’s own trademark application, what could the right holder do to deal with such situation? Through the following case, we will show you how to exhaust legal remedies to protect the interests of rights holders in the face of such a complex situation. In this case, through a precise understanding of the legal provisions on retrial, we succeeded in enabling the Supreme Court to accept the petition for retrial, so that the right holder finally obtained registration of their trademark that had been used in the Chinese market for many years and had gained high popularity in China.

A renowned British offshore oil and gas technology equipment company (hereinafter referred to as "client") had been providing several Chinese state-owned enterprises with offshore oil and gas equipment bearing the client’s trade name as a trademark, and had established a long-term and stable cooperative relationship with several oil and gas platforms. After more than 10 years of use, the client's trademark and trade name has gained a high reputation in China's offshore oil and gas industry. In 2007, the client found that their trademark which had been used in China for a long time and had gained a high reputation was preemptively applied for registration on similar goods by another party (hereinafter referred to as “opposed party”) and the trademark application was preliminarily approved. So, the client consulted our firm about how to defend their rights.

As the trademark application filed by the opposed party (hereinafter referred to as “opposed trademark application) was still in the three-month opposition period, with consideration of the timeframes for opposition examination and for examination of a new trademark application, and in view of the provisions of Article 35(4) of the Trademark Law, we offered the following suggestions to the client:
1.    Filing an opposition against the opposed trademark application as soon as possible within the opposition period;
2.    Filing a trademark application of their own as soon as possible after filing the opposition;
3.    Communicating with the opposed party about assignment of the opposed trademark (the opposed party was a natural person and applied for registration of the trademark on multiple classes of goods), and if the opposed party agrees to assign the trademark at a proper price, withdrawing the opposition after the request for assignment is filed, so as to avoid the fees for subsequent procedures.

The client accepted our above suggestions and gave our firm full authority to handle this matter.

Unsurprisingly, the client's trademark application was refused because of the existence of the opposed trademark application, and then the client requested a refusal review; as the opposed party refused to assign the opposed trademark to the client at a reasonable price, the client proceeded with the opposition proceedings and successfully stopped the opposed trademark from being registered through opposition, and then the opposed party requested a review of the opposition decision. During examination of the request for refusal review filed by the client, the Trademark Review and Adjudication Board (TRAB) did not wait for the result of the opposition review regarding the opposed trademark application, but directly made a decision unfavorable to the client.

Unsatisfied with the TRAB’s decision on the refusal review, the client filed an administrative lawsuit with the Beijing IP Court and requested the court to suspend the trial until the result of the opposition review regarding the opposed trademark application came out, pursuant to Rule 87(6) of the Interpretation of the Supreme People's Court on the Application of Administrative Procedure Law of the People’s Republic of China (hereinafter referred to as “Judicial Interpretation”). However, the Beijing IP Court did not accept the client’s request for suspension and then made a ruling against the client. The client then filed an appeal with the Beijing Higher Court and once again requested the court to suspend the trial pursuant to Rule 87(6) of the Judicial Interpretation. However, the Beijing Higher Court also did not accept the client’s request for suspension and made a final ruling against the client.

On the face of it, the client’s trademark application seemed to come to a dead end and there was no better option than obtaining the opposed trademark through assignment at an extremely high cost. In the opposition proceedings against the opposed trademark application, the client provided valid evidence showing that they had been extensively using the trademark in the Chinese market for more than 10 years and also made arguments from a highly professional point of view. The Trademark Office accepted almost all of the client's evidence and arguments and made a decision to disapprove the registration of the opposed trademark. Thus, from a professional point of view, we expected that the opposed party would also lose in the opposition review. Therefore, the client closely monitored the progress of the opposed trademark application on the official website of the Trademark Office, but because the information on said official website was not updated in a timely manner and the Trademark Office did not provide other channels for inquiry, the client could only see that the status of the opposed trademark application remained "being opposed".

Not until over 8 months after the Beijing Higher Court issued the final ruling, did the client learn from a related case that the decision on the opposition review regarding the opposed trademark application had taken effect and the opposed trademark application had been rejected. The client then immediately petitioned the Supreme Court for retrial.

Rule 110 of the Judicial Interpretation provides that,
“where a party to a case petitions a people's court at the next higher level for retrial, the party shall do so within six months after the judgment, ruling or mediation takes legal effect. In any of the following circumstances, the petition for retrial shall be filed within six months from the date when the party knows or should know about the circumstance:
(1)    there is any new evidence which suffices to overturn the original judgement or ruling;
…”

As the ruling of the Beijing Higher Court had been in effect for more than 8 months, in order to ensure that the client’s petition for retrial would be accepted by the Supreme Court, it was crucial to argue before the court about how to determine the date when the client knew or should know about the new evidence. After carefully analyzing the client’s case and other related cases, we made the following arguments about how to determine the date when the client knew or should know about the new evidence:
(1)    there was no channel for the client to know the exact date when the opposed party requested an opposition review after receiving the opposition decision;
(2)    the Trademark Office would not announce any decision on an opposition review to the public, and therefore the client had no way to learn whether or when the decision on the opposition review regarding the opposed trademark had taken effect, but could only speculate about the status of the opposed trademark application through the information shown on the official website of the Trademark Office;
(3)    by the date when the client filed the petition for retrial, the official website of the Trademark Office still showed that the opposed trademark application was “being opposed”;
(4)    except the official website of the Trademark Office, there was no channel for the client to check the actual status of the opposed trademark application; and
(5)    from the judgement about a related case, the client learned that the decision on the opposition review regarding the opposed trademark application had taken effect; 
therefore, the date when the client received the judgement about the related case should be identified as the date when the client knew about the new evidence as prescribed in the Judicial Interpretation.

The Supreme Court accepted the client’s arguments about the date of knowing about the new evidence and ruled to revoke the review decision regarding the client’s trademark application and the rulings of the Beijing IP Court and the Beijing Higher Court, and also ordered the Trademark Office to make a review decision anew. Finally, the client’s trademark application was approved for registration.  

On behalf of the client, our attorneys assisted with all decision making and attended the whole proceedings of the above case and the related cases.

Comments
Pursuant to Rule 110 of the Judicial Interpretation, a petition for retrial shall be filed within 6 months after the judgement, ruling or mediation takes legal effect; where there is any new evidence which suffices to overturn the original judgement or ruling, the petition for retrial shall be filed within 6 months from the date when the petitioner knows or should know about the new evidence. Therefore, the key to successfully initiating the retrial in this case is precisely interpreting “the date when the petitioner knows or should know about the new evidence” as prescribed in this Rule. Of course, in order to successfully apply this Rule, the petitioner needs to exhaust all possible means to provide sufficient proofs showing that the petitioner could not know about the new evidence within 6 months from the date such evidence occurs, while the collection of such sufficient proofs requires the petitioner to carefully prepare in advance and closely monitor the progress of relevant matters.

We hope that the above case study may give right holders some inspiration on how to properly apply legal provisions to safeguard their rights.

Should you have any questions or need any assistance on trademark protection, please feel free to contact us.