Opinions on Several Issues Concerning the Trial of Administrative Cases Involving the Granting and Confirmation of Trademark Rights

(Issued by the Supreme People's Court on April 20 2010.)

SPC Interpretation [2010] No.12

Since the implementation of the Standing Committee of the National People's Congress, Decision on Amending the on December 1 2001, people's courts commenced to accept and try in accordance with the law administrative cases involving the granting and confirmation of trademark rights (Trademark Administrative Cases) in which materially interested parties have taken the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce to court in connection with its specific administrative acts in trademark rejection reviews, trademark opposition reviews, trademark disputes and trademark cancellation reviews, have actively explored issues relating to the application of relevant laws and accumulated quite extensive trial experience. With a view to better trying Trademark Administrative Cases, drawing further lessons from trial experience and clarifying and unifying trial standards, the Supreme People's Court has on several occasions held conferences and carried out surveys on specific topics, widely listened to the opinions of relevant courts, relevant departments, experts and scholars and studied and summarised issues concerning the application of the law in the trial of Trademark Administrative Cases. On this basis and pursuant to laws such as the PRC Trademark Law and the PRC Administrative Procedure Law, and while taking into account trial realities, the Supreme People's Court puts forward the following opinions on the trial of such cases:

1          When trying a Trademark Administrative Case involving a disputed trademark that has yet to be used to a great extent, a people's court may, when conducting its examination to determine rights granting and confirmation conditions such as trademark similarity and similarity of the goods and handling the conflict with a prior commercial mark, take a suitably strict stance in accordance with the law on the standards for the granting and confirmation of trademark rights, fully take into consideration the interests of consumers and operators in the same industry, effectively curb illegitimate preemptive registrations, place emphasis on protecting the rights and interests of others in commercial marks, such as prior trademarks, enterprise names, etc., that have a relatively high degree of notoriety and distinctiveness and eliminate the potential for confusion of the commercial marks to the greatest extent possible. With respect to a disputed trademark that has been used for a relatively long period of time, has established a fairly good market reputation and gained a relevant public, the people's court shall accurately grasp the legislative spirit of the Trademark Law that seeks to balance the protection of rights and interests in prior commercial marks with the safeguarding of the market order, fully respect the market reality of the relevant public having objectively differentiated the relevant commercial marks and place emphasis on safeguarding the market order that has arisen and stabilised.

2          In practice, although certain signs or their constituent elements have exaggerated components, they are not, based on day-to-day experience or the common knowledge of the relevant public, etc., sufficient to cause misleading. In such circumstances, people's courts should not determine them to be signs that constitute exaggerated publicity and that are deceptive in nature.

3          When a people's court is conducting its examination to determine whether a relevant sign has other adverse effects, it shall consider whether such sign or its constituent elements could have a bad and negative effect on China's politics, economy, culture, religions, races and other such public interests and the public order. If the registration of the relevant sign only prejudices a specific civil right or interest, it should not be determined to have other adverse effects since the Trademark Law has already otherwise provided for remedies and the relevant procedure.

4          Pursuant to the Trademark Law, the name of an administrative division at the county level or above or a foreign place name familiar to the public may not, in general, be registered and used as a trademark. In practice, some trademarks are composed of a place name and other elements. In such circumstance, if a trademark, due to the addition of other elements, is on the whole distinctive and no longer carries the meaning of the place name or the place name does not constitute its major meaning, it shall not be determined to be a non-registrable trademark on the grounds that it contains the name of an administrative division at the county level or above or a foreign place name familiar to the public.

5          When trying a Trademark Administrative Case, a people's court shall conduct its examination to determine whether the disputed trademark is, on the whole, distinctive based on the common knowledge of the relevant public for the goods for which the trademark is designated. If the descriptive elements contained in the sign do not affect whether the trademark is on the whole distinctive or if the descriptive sign is expressed in a unique manner and the relevant public is able to identify the source of the goods on the basis thereof, the trademark shall be determined as being distinctive.

6          When trying a Trademark Administrative Case, a people's court shall conduct its examination to determine whether the disputed foreign language trademark is distinctive based on the common knowledge of the relevant public in China. Notwithstanding the foreign word(s) in the disputed sign having an intrinsic meaning, if the relevant public is able to identify the source of the goods based on such sign, the determination of its distinctiveness shall not be affected thereby.

7          When determining whether a trademark is a generic name, a people's court shall examine whether it is the statutory name of the good or that established by common convention. If, pursuant to the law or to state or industry standards, it is the generic name of the good, it shall be determined to be the generic name. If the relevant public generally believes that a certain name refers to a certain good, such name shall be determined to be the generic name established by common convention. If a name is specified as the name of a good in a reference work or dictionary, the same may be used as reference in determining a generic name established by common convention.

In general, the criterion for determining a generic name established by common convention is the common knowledge of the relevant public nationwide. For goods the relevant market for which is relatively circumscribed due to historical tradition, local customs and practices, geographical environment or other such reason, the name commonly used in the relevant market may be determined to be the generic name.

If an applicant knew or ought to have known that the trademark that it was applying to register was the name of the good established by common convention in certain areas, the trademark that it has applied to register shall be determined to be a generic name.

8          When examining and determining whether a disputed trademark is a generic name, a people's court shall generally do so based on the state of the facts at the time of filing of the application for registration of the trademark. If the disputed trademark was not a generic name at the time of the application but has become one by the time of approval of the registration, it shall nevertheless be determined to be the generic name of the good; and, vice versa, if it was the generic name of the good at the time of the application but ceases to be by the time of approval of the registration, securing of the registration thereof shall not be impaired thereby.

9          If a sign is solely or mainly a description or explanation of the quality, main raw materials, function, purpose, weight, quantity, origin or other such feature of the good being used, it shall be determined as not being distinctive. If a sign or its constituent elements allude(s) to a feature of the good without, however, detracting from its function of identifying the source of the goods, the foregoing circumstances shall not apply thereto.

10        When a People's Court tries a Trademark Administrative Case involving the protection of a well-known trademark, it may refer to relevant provisions of the Supreme People's Court, Interpretation on Several Issues Concerning the Application of the Law to Trials of Civil Disputes Involving the Protection of Well-known Trademarks such as Articles 5, 9 and 10.

11        With respect to a well-known trademark that has been registered in China, when determining the scope of its protection for dissimilar goods, attention shall be paid to determining a scope consistent with the extent to which it is well-known. With respect to a well-known trademark registered in China that is widely familiar to the public, when determining the scope of its protection for dissimilar goods, it shall be accorded a relatively broad scope of protection consistent with the extent to which it is well-known.

12        If a trademark agent, representative or a party that fulfils the role of agent or representative by virtue of a sales agent relationship, such as distributor or agent, registers in its own name without authorisation the trademark of a party for which it is acting as agent or representative, the people's court shall determine the same to be a pirate registration by an agent or representative of the trademark of the party for which it is acting as agent or representative. In trial practice, certain such pirate registrations occur while the agency or representative relationship is at the negotiation stage. In other words, the pirate registration occurs before the establishment of the agency or representative relationship and in such case, it shall be deemed a pirate registration by the agent or representative. The trademark registration applicant who colludes with the aforementioned agent or representative in the pirate registration may be deemed an agent or representative. With respect to a pirate registration through collusion, the same may, depending on the circumstances, be deduced based on the specific civil status relationship, etc. between the trademark registration applicant and the aforementioned agent or representative.

13        Trademark signs that an agent or representative may not apply to register do not only include signs that are identical to the trademark of the party for which it is acting as agent or representative, but also includes similar signs. Goods the trademark registration of which may not be applied for include not only goods identical to the goods for which the trademark of the party for which it is acting as agent or representative is used but also includes similar goods.

14        When a people's court is determining whether goods are similar or trademarks are similar while trying a Trademark Administrative Case, it may refer to relevant provisions of the Supreme People's Court, Interpretation on Several Questions on the Application of Law in Trial of Trademark Civil Dispute Cases.

15        When conducting an examination to determine whether relevant goods or services are similar, a people's court shall consider whether the function, purpose, producers, sales channels, consumers, etc. of the goods are identical; whether there is a relatively close connection between them; whether the objective, content, method of provision, target, etc. of the services are identical or whether there is a relatively close connection between them; or whether there is a relatively close connection between the goods/services, whether it would be likely that the relevant public would believe that the goods or services were provided by the same entity or whether there was a specific connection between the providers. The International Classification of Goods and Services for the Purposes of the Registration of Marks and the Classification for the Purposes of Differentiating Similar Goods and Services can serve as reference in determining similar goods or services.

16        When determining whether trademarks are similar, a people's court shall consider not only the degree of similarity of the constituent elements of the trademark signs and the trademark signs as a whole, but also consider factors such as the distinctiveness and degree of notoriety of the relevant trademark, the degree of connection of the goods for which it is used, etc. The standard for determination shall be placed on whether there is strong likelihood of confusion.

17        The generalised provision of Article 31 of the Trademark Law stating that “an application for the registration of a trademark may not prejudice the existing prior right of a third party” needs to be correctly understood and applied. When conducting an examination to determine whether a disputed trademark prejudices the existing prior right of another, the people's court shall, if the Trademark Law specially provides for the prior right, accord it protection in accordance with the special provision of the Trademark Law; if the Trademark Law does not specifically provide therefor, but the same is a lawful right or interest that ought to be accorded protection pursuant to the General Principles for the Civil Law or other law, the people's court shall accord it protection in accordance with such generalised provision.

When a people's court conducts an examination to determine whether a disputed trademark prejudices the existing prior right of another, in general, the application date of the disputed trademark shall be the determining factor. If the prior right has ceased to exist at the time of approval of the registration of the disputed trademark, it shall not affect the registration of the disputed trademark.

18        Pursuant to the Trademark Law, an applicant may not use unfair means to preemptively register another's trademark that is being used and has a significant influence. If an applicant is well aware or ought to be aware of another's trademark that is being used and has a significant influence, but preemptively registers the same, it may be determined to have used unfair means.

A trademark that is actually being used in China and is familiar to a relevant public of a certain scope, shall be determined to be a trademark that is being used and has a significant influence. If there is evidence to show that a prior trademark has a certain continuous period of use, continuous use of territory, or continuous sales volume or advertising and publicity, it may be determined to have a significant influence.

A trademark that is being used and has a significant influence shall not be accorded protection for dissimilar goods.

19        When a people's court tries an administrative case involving the cancellation of a registered trademark and is conducting its examination to determine whether registration of the disputed trademark was obtained through unfair means, consideration shall be given to whether it is a means that is not deceitful but disrupts the trademark registration order, harms the public interest, illegitimately appropriates public resources or seeks to obtain illegitimate gains by other means. Where only a specific civil right or interest is prejudiced, the second and third paragraphs of Article 41 and other relevant provisions of the Trademark Law shall be applied when conducting the examination and reaching a determination.

20        When a people's court tries an administrative case involving the cancellation of a registered trademark the use of which has been halted for a continuous period of three years, an accurate determination of whether the act(s) involved constitute(s) actual use shall be rendered based on the legislative spirit of the relevant provisions of the Trademark Law.

Use by the trademark rights holder itself, licensing the use thereof to another and other use that does not run contrary to the wishes of the trademark rights holder may all be determined to be actual use. If there are minor differences between the trademark actually used and the trademark whose registration was approved, but the distinctive features thereof were not changed, use of such trademark may be deemed use of the registered trademark. If a registered trademark has not actually been used, merely transferred or licensed, or if there has only been publication of information on the registration of the trademark or a declaration of having the exclusive right to use the registered trademark, the same should not be determined to be trademark use.

If a trademark rights holder is unable to actually use a registered trademark or ceases to use the same due to force majeure, policy restrictions, bankruptcy liquidation or other such objective cause, or if the trademark rights holder has a genuine intent to use the trademark and has made the necessary preparations for actual use but has not yet actually used the registered trademark due to other objective causes, it may be deemed as having a legitimate reason.