Administrative Cases Involving Granting or Affirming Trade mark Rights

The Supreme People’s Court has issued its interpretations related to the hearing of granting and affirming trade mark rights.  The broad interpretation of definitions in Chinese trade mark law to combat bad faith applications is a positive step.  This includes:

• Judicial recognition that the scope of "prior rights" includes copyright, prior name right (pen name, common Chinese transliteration of name), trade name, and fictional characters (merchandising rights).
• Celebrities in the fields of sports or entertainment can object to a trade mark on the absolute ground that use of the mark is "deceptive" and will mislead consumers as to the origin of the goods.
• Politicians and other public figures can object to a trade mark on the absolute ground that use of the mark will have an "adverse effect" on China's public interests.
• The term "agent" previously referred to a direct agency relationship between the applicant and the legitimate brand owner.  The new definition covers direct or indirect relationships, such as trading partners, employer-employee, geographical proximity between parties, and even pre-contractual discussions.

Trade mark Examination Criteria

Jointly issued by the China Trade Mark Office (CTMO) and the Trade Mark Review and Adjudication Board (TRAB), the publication consists of ten chapters setting out the examination standards with explanations and examples.  This includes the criteria for: 

• Inherent distinctiveness of a mark.
• Examination of a sound mark.
• Examination of a color combination mark.
• Deciding the similarity between two marks.

China Classification Guide on Similar Goods and Services 2017

The CTMO recently published an updated Chinese Classification Guide.  In addition, three batches of non-standard but acceptable goods and services were issued in 2016.  These non-standard items are updated from time to time but the changes will not be published.  In future, any additional acceptable non-standard goods and services will only be made available by searching the official website.  Therefore, it has become even more important for specification claims to be carefully checked before they are filed.

Trade Mark Review and Adjudication Board Practice

The TRAB is now reluctant to suspend the examination of an appeal against a refusal, pending the outcome of a non-use cancellation decision or the submission of a letter of consent.  An administrative appeal to the Beijing IP Court is required.  As a result, it has become more important to:

• Conduct a clearance search to identify prior conflicting rights early on.
• File non-use cancellation or seek consent early on.
• File a back-up application once the application is refused.
• Budget for monitoring the appeal and to file an administrative appeal.

We will continue to share with you the most important changes coming out of the CTMO, TRAB and courts.  If you have any queries about what has been covered, please speak to Rachel Tan or your usual Rouse contact.

TAGS

• China
• Trade Marks