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Opinions of the Supreme Court on Certain Issues concerning the Trial of Administrative Cases of Trademark Authorization Confirmation

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Opinions of the Supreme Court on Certain Issues concerning the Trial of Administrative Cases of Trademark Authorization Confirmation

    Westlaw China Delivery Summary Request made by: Anhui University Request made on: Tuesday, 18 May , 2010 at 12:53 BeijingTime Title: Opinions of the Supreme Court on

    CertainIssues concerning the Trial

    ofAdministrative Cases of

    TrademarkAuthorization Confirmation Delivery selection: Current Document Number of documents delivered: 1

    Westlaw China is part of Thomson Reuters. ? 2010 Thomson Reuters

    (Legal)Limited

    Opinions of the Supreme Court on Certain Issues concerning the Trial

    ofAdministrative Cases of Trademark Authorization Confirmation

Promulgating Supreme People's Court

    Institution:

    Promulgating Date: 04/20/2010

    Effective Date: 04/20/2010

    Validity Status: Valid

Since the implementation of the Decision of The Standing Committee of the National People'sCongress to Amend

    the Trademark Law of the People's Republic of China on December 1, 2001, thepeople's courts have started

    accepting and trying administrative cases of trademark authorizationconfirmation wherein interested parties sue

    the Trademark Evaluation Committee of the StateAdministration for Industry and Commerce for specific

    administrative acts made by the latter, such asre-assessment of trademarks after rejection, re-assessment of

    trademarks with disagreements,trademark disputes, and re-assessment of trademark deregistration. The people's

    courts have madean active exploration with regard to the applicability of the relevant laws and have accumulated

    richtrial experience. To better try administrative cases of trademark authorization confirmation and tofurther

    summarize trial experience and clarify and bring into uniformity the criteria for the trial of suchcases, the

    Supreme Court has organized many ad hoc conferences, carried out special-purposesurveys, drawing all-inclusive

    opinions from relevant courts, agencies, as well as scholars andexperts. The Supreme Court has studied and

    summarized issues relating to the applicability of laws tothe trial of administrative cases of trademark

    authorization confirmation. Based on theabovementioned efforts, the Supreme Court sets forth the following

    opinions with regard to the trial ofcases of this type by taking into account the actual trial practice, pursuant to the

    provisions of theTrademark Law of the People's Republic of China and Administrative Procedure Law of the

    People'sRepublic of China.

     1. With regard to trademarks under dispute that have not been widely used, a people's court, whiletrying

    administrative cases of trademark authorization confirmation, can impose strict trademarkauthorization

    confirmation criteria in accordance with the law in the examination and judgment ofauthorization confirmation

    conditions, such as trademark similarity and goods similarity, and in thehandling of conflicts with the earlier

    trademark. The people's court shall take into full consideration theinterests of consumers and peer business

    operators, effectively suppress misconduct of preemptiveregistration, focus on protecting the interests of business

    marks, such as earlier trademarks andenterprise names with high profile and strong distinctiveness, and try to

    eliminate the likelihood ofconfusion between trademarks. With regard to those trademarks under dispute that have

    been usedfor a long period of time, have established considerable market visibility, and have attracted therelevant

    public, the people's court shall accurately understand the legislative spirit of the TrademarkLaw to balance

    protecting of the interests of earlier business marks and maintaining the market order,fully respect the fact that

    public consumers have already objectively distinguished the relevanttrademarks from one another, and attach

    importance to protecting the established and stable marketorder.

     2. In actual practice, certain marks or components thereof are exaggerated, but not sufficient to bemisleading

    based on daily life experience or general perception of the relevant public. For suchcircumstances, a people's court

    is advised not to deem those marks as marks with exaggeratedpublicity and deceiving intentions.

     3. A people's court, while examining and ruling whether the marks in question result in other adverseimpacts,

    shall consider whether such marks or other components thereof are likely to cause negativeand adverse impacts to

    the public interests and public order of the country, in terms of politics,economy, culture, religion, ethnics, etc. If

    the registration of the marks in question is only detrimentalto particular civil rights, it is advised not to deem the

    case to have other adverse impacts since theTrademark Law provides a remedy method and corresponding

    procedures.

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     4. The Trademark Law provides that the name of an administrative jurisdiction above the county leveland

    foreign place names widely known may not be registered or used as trademarks. In practice,where some trademarks consist of place names and other elements, if a trademark includes otherelements, demonstrates distinctiveness as a whole, does not carry the meaning of the place name orhave it as its primary meaning, it is advised not to determine that the trademark may not be registereddue to its inclusion of names of administrative jurisdictions above the county level and foreign placenames widely known.

     5. A people's court, while trying administrative cases of trademark authorization confirmation, shallexamine and judge from an overall perspective whether a trademark has distinctiveness based oncommon perception of the relevant public with regard to goods designated to use the trademark underdispute. If the descriptive elements in the mark do not affect its overall distinctiveness, or thedescriptive mark is expressed in a unique way by which the relevant public can identify the origin ofthe goods, it shall be concluded that the trademark possess distinctiveness.

     6. A people's court, while trying administrative cases of trademark authorization confirmation, shallexamine and judge whether foreign language trademarks have distinctiveness based on the generalperception of the relevant public within the territory of China. Foreign words in trademarks underdispute have inherent meanings; however the relevant public can identify the origin of goods by thetrademarks. This does not prejudice the determination of its distinctiveness.

     7. A people's court, while determining whether the trademark under dispute is a generic name, shallexamine whether it is a statutory or conventional goods name. Those trademarks that are genericnames according to the law, national standards, or industrial standards shall be deemed to be genericnames. If a name can signify goods of a category according to the relevant public, such a name shallbe deemed as a generic name. Goods names listed in professional reference books and dictionariescan be used as reference to determine conventional generic names. Conventional generic names are usually determined according to the general perception of therelevant public nationwide. Generic names of regular goods in the relevant markets as a result ofhistorical tradition, local customs, and geographic environments can be deemed as generic names.

    If an applicant is or should be aware of the trademark he applies for registration being a conventionalgoods name in certain regions, the trademark to be registered shall be deemed as a generic name.

     8. A people's court, while determining whether the trademark under dispute is a generic name, usuallyshall base its ruling on the reality at the time when the trademark registration application is filed. If atrademark was not a generic name when the application was filed but has become one by the time theregistration thereof is being processed, the trademark shall still be deemed as a generic name ofgoods. If a trademark was the generic name of goods when the application was filed but is no longerone by the time the registration thereof is being processed, the registration thereof shall not beprejudiced.

     9. If a mark merely or primarily describes and explains the features, such as quality, major rawmaterials, function, application, weight, quantity, place of manufacturing, it shall be deemed topossess no distinctiveness. Where a mark or the elements thereof connote the features of the goodsbut does not affect the function of identifying the origin of the goods, it shall not be deemed to fall intothe circumstance prescribed in the preceding sentence.

     10. A people's court, while trying administrative cases of trademark authorization confirmationinvolving the protection of well-known trademarks, can refer to the relevant provisions of Article 5,Article 9, and Article 10 of the Interpretation of the Supreme People's Court concerning Certain Issuesrelating to the Application of Laws in the Trial of Cases of Civil Disputes Arising from the Protection ofWell-known Trademarks.

     11. With regard to well-known trademarks registered in China, when the protection scope relating todissimilar goods is determined, the scope shall be made commensurate with their repute. With regardto trademarks registered in China that are widely known by the public, a wide protection scopecommensurate with their repute shall be ruled when the protection scope relating to dissimilar goodsis determined.

     12. Where a trademark agent, representative, or agent/representative based on sales agencyrelationship, without authorization, registers the trademark of its principal in his own name, a people'scourt shall deem it an act wherein the agent/representative files preemptive registration of thetrademark of the principal. In trial practice, some

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    preemptive registration acts occur while theagent/representative relationship is still under negotiation, i.e. preemptive registration happens beforethe agent/representative relationship is established. Such a case shall be deemed as a preemptiveregistration act of the agent/representative. A trademark registration applicant who files preemptiveregistration of a trademark through collusion with the above agent or representative can be deemedas an agent or representative. Collusion acts of preemptive registration can be inferred based on theparticular relationships between the trademark registration applicant and the aforementioned agent orrepresentative in light of the reality.

     13. Trademarks for which an agent or representative may not apply registration include both marksidentical with that of the principal and similar marks. Goods for which an agent or representative maynot apply registration include both goods identical with the principal's goods that use the trademarkand similar goods.

     14. A people's court, while trying administrative cases of trademark authorization confirmation todetermine goods similarity and resemblance, can refer to the relevant provisions of the Interpretationof the Supreme People's Court concerning Certain Issues relating to the Application of Laws in theTrial of Cases of Civil Disputes Arising from the Protection of Trade Marks.

     15. A people's court, while examining and determining the similarity of the relevant goods or services,shall consider whether, among other things, the function, application, manufacturing units, saleschannels, consumer groups are identical or highly connected, whether the purpose, content, method,recipients of the services are identical or highly connected, whether the goods and services are highlyconnected, whether it tends to make the relevant public believe that the goods and services areprovided by the same entity, or whether the providers are related in a particular way. InternationalClassification of Goods and Services for Trademark Registration and Distinction between SimilarGoods and Services can be used as references to determine the similarity between goods or services.

     16. A people's court, while determining the similarity of trademarks, shall not only consider thesimilarity of trademark components as well as their similarity as a whole but also the distinctivenessand repute of the trademarks in question, as well as the connection between the trademarks. Whetherit tends to result in confusion is to be used as the criterion for judgment.

     17. The summarizing provision concerning "Application for trademark registration shall not bedetrimental to the existing earlier rights of others" in Article 31 is to be correctly understood andapplied. A people's court, while examining and determining whether a trademark under dispute isdetrimental to the existing earlier rights of others, shall protect the earlier rights which are specificallyprovided by the Trademark Law pursuant to the specific

    provisions of the Trademark Law. Where theTrademark Law is silent, the legitimate rights to be protected

    pursuant to the General Civil Law (of thePeople's Republic of China) and other laws and regulations shall be protected pursuant to thesummarizing provision.

    A people's court, while examining and determining whether a trademark under dispute is detrimentalto the earlier rights of others, usually bases its ruling on the date when the application for thetrademark under dispute is filed. If the earlier right does not exist when the trademark under dispute isbeing processed for registration, the registration thereof shall not be prejudiced.

     18. According to the Trademark Law, an applicant shall not, via improper means, file preemptiveregistration for

    a trademark of others that has been in use and has certain market visibility. If anapplicant files preemptive registration for a trademark of others that has been in use and has certainmarket visibility while being or should be aware of it, the applicant shall be deemed to have takenimproper means.

    Trademarks practically used within the territory of China and known by the relevant public within acertain region shall be deemed as trademarks that have been in use and have certain market visibility.Where evidence proves that an earlier trademark has been in use for a certain time period, in aregion, or has been advertised to a certain extent, the trademark can be deemed to have marketvisibility.

    With regard to trademarks that have been in use and have certain market visibility, it is advised not toprotect them in relation to dissimilar goods.

     19. A people's court, while trying administrative cases involving the revocation of registeredtrademarks, and examining and ruling whether a trademark under dispute has been registered viaimproper means, shall consider whether it is a means to achieve improper gains other than fraud suchas disruption of trademark registration order,

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    harming the public interest, and misappropriation ofpublic resources. Cases that are only detrimental to particular civil rights shall be examined and ruledpursuant to paragraphs 2 and 3 of Article 41 and other relevant provisions.

     20 A people's court, while trying administrative cases involving the revocation of trademarks that havenot been used for three consecutive years, shall correctly determine whether the acts in questionconstitute actual use according to the legislative spirit of the relevant Trademark Law provisions.

    A trademark proprietor's use of its own, use by others with his consent, and other uses that do notviolate the intention of the proprietor can all be deemed as actual use acts. Despite the nuanceddifference between a trademark in actual use and an officially registered trademark, if thedistinctiveness thereof is not altered, it can be deemed as use of a registered trademark. With regardto uses of a trademark that has not been in actual use, and only has transfer or permissive acts, oronly has announcements of the registered trademark information or exclusive entitlement thereof, it isadvised not to deem them as uses of trademark.

    If a trademark proprietor fails to actually use or discontinue to use a registered trademark due toobjective reasons, such as force majeure, policy restriction, and bankruptcy liquidation, or a trademarkproprietor has actual intention to use the trademark and has necessary preparation for actual use buthas not actually used the registered trademark due to other objective reasons, the cases can all bedeemed to have justifiable reasons.

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