A Step Towards Procedural Certainty: Amendments to China's Trademark Review and Adjudication Rules

Narrowing the Scope of Acceptable Cases

In order to comply with the demands of China's Trademark Law and the Implementing Regulations, the amendment narrows the scope of cases that the TRAB will accept. Unlike the trademark law's first revision and its implementing rules from 1983, last year's trademark revision and the implementing regulations from this year do not provide that an applicant may apply for review with the TRAB if he is dissatisfied with the decision of the Trademark Office (TMO) to refuse his application for an assignment or renewal. Thus, the TRAB ignores these two issues and only accepts the following for review: registration applications refused by the TMO; opposition decisions by the TMO; cancellation decisions by the TMO; and cancellation applications with the TRAB. Certainly, in case of refused applications on renewal or assignment, the applicant may seek remedies with courts according to the judicial review principle required by TRIPS. It is worth mentioning that the cancellation application with the TRAB now combines two issues in the previous trademark review rule, i.e. the application for adjudication on the disputed trademark and the application for review of the cancellation of improperly registered trademarks. The distinction between the above two applications has been removed as a result of the 2001 trademark law revision and the implementing regulations.

Adoption of Civil Procedure Rules

The PRC government is under pressure to institute a judicial review system as required by TRIPS. To this end, the Trademark Review and Adjudication Rules set forth a board proceeding consistent with the trial stages under the PRC Civil Procedure Law (中华人民共和国民事诉讼法) (the Civil Procedure Law), e.g., filing a suit, accepting a case, trial and delivering awards. This marks a significant step because prior proceedings before the TRAB were typically administrative procedures that didn't follow a uniform system of resolution.

Further, the TRAB uses many rules common to civil procedure, including a collegiate bench, removal of judges, suits brought by selected representatives of parties, duration and service, among others. First, the Review Rules have been amended to employ a collegiate bench for trademark disputes, except for simple disputes in which the facts are self-evident.¹ Prior to this amendment, TRAB members voted for a decision on paper ² and TRAB staff rendered an opinion for most cases. Only a few were submitted to TRAB members in practice. Naturally, the amendment codifies the current practice and makes a technical correction to the previous rules. Second, the trademark review rule now explicitly states that any TRAB staff must recuse himself from the case if he is a party, a near relative of a party, an agent of a party, has a personal interest in the case or has some other relationship with a party or an agent of a party.³ This rule on conflict of interests is the same as that in Article 9 of the Civil Procedure Law. Third, the amendment provides for proceedings brought by representatives of parties in case of jointly owned trademarks, which was lacking in the old trademark law and its implementing rules.⁴ Finally, the Review Rules specify the time periods for hearings by incorporating Article 75 of the Civil Procedure Law into the provisions.⁵

In addition, the modification addresses the possibility of a "trial type" hearing at the request of the parties or in case of necessity.⁶ This point is different from both the old review rules and the Civil Procedure Law. Prior to the amendment, the review rule specified that the TRAB may initiate a public hearing proceeding if necessary; the Civil Procedure Law stipulates that civil cases shall be heard in public, except for those involving state secrets, individual privacy issues or which are otherwise provided by law.⁷ Undoubtedly, as a quasi-judicial body, the TRAB needs the above procedural rules and therefore the amendments bring board proceedings into conformity with current international standards. Also, the proper adoption of the stricter procedure won't eliminate the flexibility and efficiency that are felt to be the principal advantages of TRAB proceedings.

Use of Evidence Rule

For the first time, the Review Rules list the evidence rules for a board proceeding, which borrow the existing evidence rules for civil and administrative litigation. The latter were recently made public by the Supreme People's Court (see chart below). Integrating evidence rules into the review rule is a great improvement because the prior rules and practices had long ignored the evidence rule.

The Review Rules now cover the main points of a general evidence rule, e.g. the burden of proof, classification of evidence, original document issue, testimony and balance of evidence. But the modifications do not go so far as to adopt the rules on the preservation of evidence, detailed provisions on expert opinion, evidence exchange and time period of burden of proof. Clearly, the Review Rules aim at a more flexible evidence rule than procedural rules for courts.

Problems and Issues

Time Limit of Review

The Revised Rules are silent on the time limit of the review proceeding in spite of the fact that thousands of cases are pending in the TRAB. On this point, the TRAB rule is different from the Civil Procedure Law that generally requires judges to decide cases within six months from filing.⁸ It seems that reducing the board's backlog of pending cases and expediting the board proceedings are outside of the scope of the present rulemaking. Similarly, the amendments to China's trademark law and its implementing rules do not set the time limit for examination of trademarks. There are grounds for believing that the legislature still intends to shield the administrative authorities, both the TMO and TRAB, from pressure to resolve cases quickly.

Professional Standards

Professional standards in the TRAB are a key issue for the effectiveness of the Revised Rules and their enforcement. In particular, the inclusion of evidence rules and judicial procedures demands a team of skilled trademark law professionals in the TRAB. Generally speaking, TRAB staff responsibilities are similar to those of an administrative trademark judge in the US Trademark Trial and Appeal Board. But the current staffing of the TRAB is not sufficient for the task at hand. At least half of the TRAB staff is not PRC-qualified lawyers. Unsurprisingly, when staff with a poor legal background is asked to handle trademark review cases, the parties to a dispute are unlikely to obtain the benefit of new legislation.

Conclusion

Some issues, like time limits of board proceedings, have not been resolved by the Revised Rules. Also, we cannot expect that the new rules themselves will be able to solve the problem of professional standards and experience among TRAB staff. However, it is to be expected that the adoption of civil procedure and evidence rules will help the parties' legal redress and obtain a more predictable result for cases that the TRAB hears. In addition, the Revised Rules bring the trademark review process in line with the revisions of China's trademark law and its implementing rules, especially in respect of the scope of acceptable cases, but also in other areas as well. Undoubtedly, the re-design of proceedings before the TRAB is an improvement to push China towards implementation of greater procedural certainty.

Endnotes

1 Review Rules, Articles 8 and 30.

2 Review Rules (1995), Article 7.

3 Review Rules, Article 9.

4 Ibid, Article 11.

5 Ibid, Article 96.

6 Ibid, Article 45.

7 Civil Procedure Law, Article 120. A divorce case or a case involving trade secrets may not be heard in public if a party so requests.

8 Ibid, Article 135.