Beijing Wei Chixue Law Firm--Examination Guidelines Regarding Administrative Cases of Granting and Affirming Trademark Right

I. Recognition and protection issue of well-known trademark

1. When to reject the registration of an involved mark or invalidate a registered trademark by applying Article 13(2) or 13(3) of Trademark Law which will take effect on May 1, 2014 (hereafter referred to as “Trademark Law”), it shall be based on the condition that the cited mark has reached well-known status before the application date of the involved trademark. Where the evidences, such as the cited mark has been recognized well-known, provided by the interested party are able to prove that the cited mark has reached well-known status before the application date of the involved mark, such evidence shall be admitted.

2. When to determine whether the involved mark constitutes the circumstances of rejection and prohibition of use prescribed in Article 13(2) or 13(3) of Trademark Law, whether the trademark requested for protection reaches well-known status shall be determined first in principle; if affirmative, then it shall follow the determination of whether the involved mark constitutes a reproduction, imitation or translation of the well-known mark, whether it is easy to confuse or mislead the relevant public, or whether it is possible to damage the interests of the well-known trademark holder.

3. When an interested party requests to reject the registration of the involved mark or invalidate the involved mark on identical or similar goods based on Article 13(3) of Trademark Law, it shall not be determined as wrong in application of law in principle, if the administrative decision is made according to Article 30 or Article 31 of Trademark Law and meets the following conditions:

(1) The interested party does not expressly claim the involved mark violates Article 30 or Article 31 of Trademark Law;

(2) The substantive ground of the interested party requesting to reject the registration of the involved mark or invalidate the involved mark is that it is easy to cause confusion between the involved mark and the trademark requested for protection among the relevant public;

(3) The application of the interested party requesting to invalidate the involved mark is within the 5-year term prescribed in Article 45(1) of Trademark Law.

II. Recognition and protection issue of geographic indications

4. When the interested party requests to reject the registration of an involved mark or invalidate a registered trademark based on Article 16(1) of Trademark Law, he shall prove the registration application of the involved mark is easily to mislead the relevant public to believe that the goods bearing the trademark comes from the region of the geographic indication.

5. When the interested party claims to reject the registration or invalidate a geographic indication or collective trademark on the ground that it violates Article 13(3) or Article 30 of Trademark Law based on his prior common registered trademark, such claim shall not be supported. When the interested party claims to reject the registration or invalidate a common trademark on the ground that it violates Article 13(3) or Article 30 of Trademark Law based on his prior registered geographic indication or collective trademark, such claim shall not be supported.

6. When the interested party claims to reject the registration or invalidate a geographic indication or collective trademark on the ground that it violates Article 16(2) of Trademark Law, it shall be determined according to the content of “not in conformity with the relevant provisions of this Law” prescribed in Article 30 of Trademark Law.

III. Determination of confusion and misunderstanding

7. The trademark registrant enjoys independent and exclusive right over his various registered trademarks. The trademarks registered successively do not absolutely maintain consistency in right.

8. The registrant’s basic trademark obtains certain popularity through use so as to make the relevant public associate the trademark on the identical or similar goods applied subsequently with the basic mark and believe the goods of the two marks both come from the trademark registrant or there is particular relevance between the two marks. The business reputation of the basic trademark may be extended to the trademarks applied later.

9. After the registration of the basic trademark and before the application of the subsequent mark, if a trademark identical with or similar to the subsequent mark registered on identical or similar goods of others obtains certain popularity through continuous use, under the circumstance that the basic trademark has not been in use or has not yet obtained popularity through use and the relevant public is likely to confuse the subsequent mark to the trademark with certain popularity filed by others, the claim by the subsequent trademark applicant that its subsequent mark is the consistency of the basic trademark shall not be supported.

10. The claim of the interested party that his involved mark which has not been registered is distinguishable from the cited mark since it has established a stable market order shall not be supported, if it is unable to prove that the involved mark has been continuously used before the application date of the cited mark.

11. The applicant of the involved mark shall provide evidence to prove the use, popularity of the involved mark and no confusion is caused between the involved mark and the cited mark among the relevant public to support its claim that the involved mark has established a stable market which makes the involved mark distinguishable from the cited mark. The owner of the cited mark may also provide evidence to prove it is likely to cause confusion between the involved mark and the cited mark among the relevant public.

12. In respect of the claim that the involved mark has established a stable market order which makes the involved mark distinguishable from the cited mark by the applicant of the involved mark, it shall be determined comprehensively according to the evidence provided by the applicant of the involved mark, the evidence provided by the owner of the cited mark, and the subjective state of the applicant of the involved mark, etc.

13. In respect of whether the relevant public is able to distinguish the involved mark from the cited mark, the interested party may provide the market survey result as evidence. The market survey shall simulate the specific situation of relevant public buying the goods as far as possible. And the market survey shall include detailed descriptions of the scope and number of the relevant public, the extent of attention carried by the relevant public when they buy the goods, comparison of the trademarks as a whole, comparison of the trademarks separately, etc. Without the above descriptions, applying the above factors in a wrong way or it is unable to confirm the authenticity of the result of the market survey, such market survey shall not be accepted.

IV. Protection to prior right issue

(i) Name right

14. Where the trademark filed for application is the name of a public figure in politics, religion, history, etc., under the circumstance that it is sufficient to cause negative influence on public interests and order, such as politics, economy, culture, religion, nationality and so forth of our country, it can be determined as a circumstance of “having other unhealthy influence” prescribed in Article 10(1)(viii) of Trademark Law.

15. Where the trademark filed for application is the name of a natural person alive, which infringes the name right of that natural person, it is inadvisable to determine it as a circumstance of “having other unhealthy influence” prescribed in Article 10(1)(viii) of Trademark Law.

16. Name includes the name recorded in household registration, alias, pen name, stage name, honorable title, nickname, etc.

17. Where there is established relationship between an identification sign and a particular natural person, such sign shall be taken as the name of the natural person.

18. Where the applicant is aware of the name of a natural person but files the trademark by means of theft or illegal use, such act shall be determined as damaging name right of a natural person prescribed in Article 32 of Trademark Law.

19. The reputation of a natural person is not the precondition of protecting the name right. But reputation can be a factor of whether the relevant public has established direct relationship between the name and the person.

20. Usually, name right should be claimed by the natural person himself/herself. Under special circumstance as submitting the authorization document with a clear scope of authority from the name right owner of a model, actor, etc. who is in brokerage relationship with the agent, the authorized agent may claim name right for the model, actor, etc. as an interested party.

(ii) Copyright

21. Whether the sign of a trademark constitutes a work of art, it shall be determined according to the relevant provisions of Copyright Law.

22. The design draft of the trademark sign, copyright registration certificate, trademark sign design agreement, copyright transfer agreement, etc. may be used as prima facie evidence to determine the ownership of copyright.

23. The copyright registration certificate only obtained after the trademark opposition or invalidation is filed is insufficient to prove copyright ownership.

VI. Relevant procedural issues

24. Under the circumstance that the business license of the applicant of the opposed mark has been revoked but the applicant has not handled the cancellation procedure, the opposed mark may not be approved for registration according to Article 4 of Trademark Law, if the applicant meets the following conditions:

(1) The business license of the applicant of the opposed mark has been revoked for more than 3 years when the administrative decision is made;

(2) There is no evidence showing the opposed mark has been assigned or licensed to others;

(3) The applicant of the opposed mark neither attended the trademark adjudication procedure and the following lawsuit procedure, nor made an explanation to the situation of its enterprise and the opposed mark or raised relevant claims;

(4) The opposed mark is a reproduction or imitation of the cited mark and the designated goods of the two marks are of certain relevance.

25. In respect of an unfavorable administrative decision to the assignee of a trademark which has been assigned in the trademark adjudication procedure, if the defendant had not notified the assignee to make a clear statement whether to attend the adjudication procedure, such administrative decision shall be revoked if the assignee is able to prove that the administrative decision violated law in the grounds and conclusion. Though the defendant has not notified the assignee to make a clear statement whether to attend the adjudication procedure, if the assignee is not able to prove the administrative decision is in violation of law in the grounds and conclusion, the claim of the administrative decision violating law by the assignee shall be overruled on the basis that the relevant trademark adjudication procedure is improper.

26. Where the assignee of a trademark which has been assigned in the trademark adjudication procedure attended the following adjudication procedure, the assignor shall no longer be an interested party to the adjudication procedure and he has no right to file litigation against the relevant adjudication decision.

27. The relevant case materials, such as Filing Receipt, Notification of Adducing Evidence, Notification of Response, Notification of Evidence Exchange, and evidence, should be taken as being served when they are received by the interested party.

28. Where the plaintiff claims that the service procedure violates law based on his not receiving of the relevant case materials, the defendant shall provide evidence to prove that the relevant case materials mailed by him has been signed or there is other evidence to prove the receipt of the materials by the plaintiff or it is deemed to have been served. The internal procedural materials, such as document dispatch list, or the evidence showing the delivery of the relevant case materials by post and no returning of the delivery are not sufficient to prove the materials have been served.

29. Where the defendant is unable to provide evidence to prove the plaintiff has received the relevant case materials, under the circumstance that both the grounds and conclusion of the decision are appropriate, in addition to the claim that the service procedure is in violation of law, if the plaintiff has no other claims or evidence in substance or the claims or evidence are obviously untenable or out of the scope of the case, the plaintiff’s claim may be overruled on the basis that the service procedure is improper.

30. Where the plaintiff claims to revoke the adjudication decision based on that the members of the collegiate bench have not been notified in the trademark adjudication procedure which constitutes violation of law, if he does not raise substantive cause of avoidance, the plaintiff’s claim shall be overruled on the basis that the avoidance procedure is improper.