Litigating before the Boards of Appeal of the State ... › tunnel-web › secure › webdav › ... · 5/5/2016 · final examination announcement will be issued 7 . 3. The disputes

Litigating before the Boards of Appeal of

the State Intellectual Property Office of the People’s Republic of China

— Chinese Disputes Resolution Procedures for Registered Trademark

Professor David Chen, PhD

5 May, 2016 Alicante, Spain

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Profile of Professor David Chen, PhD

Professor of the Law School of Fudan University

Executive Dean of Fudan Shanghai Advanced Institute of Lawyers

Founding Partner of Allbright Law Offices

Vice Director and Mediator of Shanghai Commercial Mediation Center

President of the Intellectual Property Association

in China (Shanghai) Pilot Free Trade Zone

Arbitrator of China International Economic and Trade Arbitration Commission

Aarbitrator of International Commercial Chamber

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3

CONTENTS

1. The authorities (administrative and judicial) in the disputes resolution procedures and their jurisdictions

2. The disputes resolution procedures before the preliminary examination announcement in Trademark Registration Application

3. The disputes resolution procedures after the preliminary examination announcement in Trademark Registration Application

4. The disputes resolution procedures for declaration of the invalidity of Registered Trademarks

5. Relevant cases sharing

4

1. The authorities (administrative and judicial) in the disputes

resolution procedures and their jurisdictions

Administration

In charge of the trademark

registration and

administration throughout the

country

Administration

Responsible for handling

trademark disputes

Judicial Authority

Chinese judicial system is a four

levels and two-instance trial

system. The party concerned who

dissatisfied with the first trial may

appeal to a higher court. The level

of Beijing Higher People’s Court

is higher than Beijing IP Court.

So these two courts responsible to

hear the administrative cases

and appeals against TRAB

Trademark Review &

Adjudication Board (TRAB)

Beijing IP Court &

Beijing Higher People’s Court Trademark Office (TO)

1-1 The functions of authorities

1. The authorities (administrative and judicial) in the disputes

resolution procedures and their jurisdictions

1-2 Chart of relationship among authorities

TRAB TO

State Administration for Industry

& Commerce of China (SAIC)

The first trial shall be concluded

within 6 months under ordinary

procedure, a 6 months

extension may be allowed by

the approval of the president of

court;

if in summary procedure shall

be concluded within 3 months

Supreme Court

Establish Establish

Review the decisions

made by TO

“four levels and two-instance trial system”

Beijing Higher People’s Court

Beijing IP Court

(equivalent to intermediate court)

Basic Courts

Judge reviews

decisions made

by TRAB

Appeal to a

higher court

Appeal court concludes cases

within 3 months may be

extended by the approval of

the president of court

5

2. The disputes resolution procedures before the preliminary

examination announcement in Trademark Registration Application

Trademark Review &

Adjudication Board (TRAB) Beijing IP Court Trademark Office (TO)

2-1 The TO examines trademark registration applications within 9 months, and decides whether shall

issue a preliminary examination announcement.

If the applicant objects TO’s

decision of dismissing a

trademark registration

application or not making a

preliminary examination

announcement, may apply

for TRAB review within 15

days upon receipt of TO’s

notice.

TRAB shall make a decision

within 9 months which may

be extended for 3 months

approved by SAIC. The

party who objects decision,

may bring a lawsuit to

Beijing IP court within 30

days upon receipt of TRAB’s

notice.

Responsible to hear the

cases against TRAB and

make the judgment. If the

party objects to the

judgment, the party may

appeal to Beijing Higher

People’s Court within 15

days upon receipt of the

copy of judgment.

6

2. The disputes resolution procedures before the preliminary


2-2 The chart of disputes resolution procedures before the preliminary examination announcement in

Trademark Registration Application

END

Application to TO for Registering Trademark

Meet the

requirements by

law?

Preliminary Examination

Announcement

Application

Rejected

Rejection to Trademark

Registration Application

Apply to

TRAB review?

Favorable

TRAB review

result?

TO examines the

application form

within 9 months

Beijing IP Court

Yes

Yes

No No


Yes

No

TRAB make

decision within

9 months

Apply TRAB

review within

15 days

Bring to Beijing

IP court within

30 days

Appeal within

15 days

Preliminary

announcement

issued/available

for 3 months;

If no objections,

final examination

announcement

will be issued

7

3. The disputes resolution procedures after the preliminary


3-1 The following concerned parties may, within 3 months from the date of the preliminary

examination announcement of a trademark, raise objections to TO, which may bring an objection

litigation in trademark registration application

(1) The holder of prior rights or an

interested party thinks that the

trademark is in violation of

Clause 2-3 of Article 13, Article

15, Clause 1 of Article 16, Article

30-32 of Trademark Law.

(2) Any party thinks that the

trademark is in violation of Article

10, 11& 12 of Trademark Law

Opposing Parties

TO shall hear to the facts and

grounds submitted by the opposing

party and the opposed party, make

a decision on whether to approve the

registration of the trademark within

12 months upon expiry of the

announcement period, may be

extended for 6 months approved

by SAIC.

Trademark Office (TO)

8



3-2 The following concerned parties may request TRAB to bring a review decision, after TO makes a

decision whether to approve the registration of the trademark.

(1) The opposed party who objects

the decision made by TO not to

register the trademark, may

apply for review to TRAB within

15 days when receiving the

decision. The review period is

within 12 months which may be

extended for 6 months

approved by SAIC.

(2) The opposed who has objections

to the decision by TRAB may

bring a lawsuit to Beijing IP

Court within 30 days upon

receipt of review decision notice.

Trademark Applicant

(Opposed Party)

Where TO decides to approve

registration of trademark, it shall

issue the registration certificate and

make an announcement.

The opposing party, if still having

objections, may request TRAB to

declare the registered trademark

invalid.

Opposing Parties

9

Yes



3-3 The chart of disputes resolution procedures after the preliminary examination announcement

in Trademark Registration Application

END

Preliminary Examination Announcement

Any objections?

If Yes, enter TO

objections review

Rejection to Trademark

Registration Application

Opposed Party

apply to

TRAB review?

Favorable

TRAB Review

Result?

Issued by TO,

preliminary

announcement

available for

3 months

Beijing IP Court

No


Yes

Upon receipt of

the decision, if

dissatisfied, bring

to Beijing IP court

within 30 days

Apply TRAB

review within

15 days

Rejected by TO

during objections

review?

Trademark Registration Announcement

No

Yes

No

Yes

No

TRAB make

decision within 9

months

Appeal within

15 days

Decisions:

Maintain TRAB’s

decision: reject to register

trademark;

Favourable judgement

result: TRAB makes a new

review

TO make

decision within

12 months

TO grants registered trademark

10

4. The disputes resolution procedures for declaration of the

invalidity of Registered Trademarks

4-1 A registered trademark shall be declared invalid by TO if it is in violation of Article 10, 11 &12 of

Trademark Law, or its registration is obtained by deceptive or other improper means. Other entities

or individuals may request TRAB to declare such registered trademark invalid.

(1) If the trademark holder objects TO’s

decision, may apply for review to

TRAB. TRAB shall make a decision

and notify within 9 months upon

receipt of the application, which may

extended for 3 months approved

by SAIC.

(2) The holder who objects TRAB’s

decision may bring a lawsuit to

Beijing IP Court within 30 days

upon receipt of TRAB’s notice and

appeal to Beijing Higher People’s

Court if dissatisfied with the first trial

within 15 days.

Invalidation declared by TO

(1) TRAB shall notify the party

concerned in writing, and require to

issue a reply within the prescribed

period. TRAB shall render a ruling

on maintaining the registered

trademark or declaring the

registered trademark invalid within 9

months which may extended for 3

months approved by SAIC.

(2) If the party concerned objects the

ruling, may bring a lawsuit to Beijing

IP Court within 30 days upon

receipt of TRAB’s notice and appeal

to Beijing Higher People’s Court if

dissatisfied with the first trial within

15 days.

Other entities or individuals

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4-2 Where a registered trademark is in violation of Clause 2 and 3 of Article 13, Article 15, Clause 1

of Article 16, Article 30-32 of Trademark Law, the holder of prior rights or an interested party may

request TRAB to declare the registered trademark invalid within 5 years upon the registration of the

trademark.

TRAB shall, upon receipt of an application for declaring the registered trademark

invalid, notify the party concerned, and require the parties to issue a reply within the

prescribed period.

TRAB shall maintain the registered trademark or declare the registered trademark

invalid within 12 months which may be extended to an additional 6 months

approved by SAIC. If the party objects TRAB’s decision, may bring a lawsuit to Beijing

IP Court within 30 days upon receipt of TRAB’s notice and appeal to Beijing Higher

People’s Court if dissatisfied with the first trial within 15 days.

12



4-3 The chart of the disputes resolution procedures for Declaration of the Invalidity of Registered

Trademarks

Trademark Registration Announcement The prior rights holder and

other persons request

TRAB to declare the

registered trademark invalid

Timing: within 5 years

upon the registration of

trademark

Registered Trademark Review

TRAB complete review within

12 months

Invalidate the

Registered

Trademark?

TO Investigation Decide to Invalidate

Registered Trademark

TRAB Request the Parties

to Make Reply

Invalidation of Registered Trademark

Confirmed

Dissatisfied with

the review

decision?

Beijing IP Court


Appeal within

15 days

Maintain Registered Trademark No

Yes

Yes No

Upon receipt of the

decision, if dissatisfied,

bring to Beijing IP court

within 30 days 13

PUMA had objections to the decision made by TRAB, then brought an administrative lawsuit against TRAB

to Beijing’s First Intermediate People’s Court (the IP court has not yet been established). In this case,

PUMA presented that “WINDCELL” did not constitute similarity with the other registered trademarks. Also the

products with “WINDCELL” had been heavily sold which might not cause confusion to costumers between

“WINDCELL” and the other trademarks.

The court considered that the trademarks were used in the same product category which made them the similar

trademarks in the same or similar product category. Therefore, the court maintained the decision of TRAB.

PUMA applied a review to TRAB, but its proposition was not supported by TRAB, then its territorial extension

protection was REJECTED again. The reason was that there are several registered trademark similar with

“WINDCELL” which not only are all registered in 25th category (clothes, shoes ,etc.) such as “WIND”, “wind” and

“cell”, but their application dates were all ahead of the application of “WINDCELL”.

PUMA applied a territorial extension protection of its trademark “WINDCELL” to TO in China for registering the

trademark in the 25th category. TO, in August 2012, made a decision to REJECT the application.

5. Relevant cases sharing - PUMA

5-1 The failure of extension protection of PUMA’s “WINDCELL” trademark

TO

TRAB

Court

The Court maintained the decision of TRAB – Rejection of territorial extension protection 14

5. Relevant cases sharing – Land Rover

5-2 Land Rover applied to declare Geely’s “陆虎”(“LUHU”) registered trademark invalid

5-2-1 The involved parties and trademark

陆虎, pronounced “LUHU” in Chinese is translated from Land Rover

陆虎 (Involved trademark)

versus

Holder to the Trademark

Requester to the Invalidation

15

Court thought that before registration of “陆虎”, the representative of Land Rover had recognized “陆虎” was

referred to Land Rover and its car brand in media . And “陆虎” had broad influence in Chinese market, Geely as a

car manufacture should know the popularity of Land Rover and correspondence between Land Rover and “陆虎”.

Geely registered “陆虎” clearly lack of legitimacy which violated article 31 of 2001 Trademark Law. Therefore,

Court revoked TRAB’s decision. Geely and TRAB dissatisfied and appealed to Beijing Higher People’s Court

, but the appeal was rejected.

In 2004, Land Rover requested TRAB to declare trademark “陆虎” invalid, and provided Chinese media reports to

prove before 1999 “陆虎” was referred to Land Rover, and Land Rover and its automobiles were highly

recognized by Chinese customers. But TRAB considered that Land Rover failed to prove its use and publicity of

“陆虎”before Geely’s registration of “陆虎” , so Geely did not violate Trademark Law. TRAB decided to maintain

Geely’s registration trademark. Land Rover objected and sued to Beijing’s First Intermediate People’s Court

(the IP court has not yet been established).

In 2001, Geely was granted to register trademark “陆虎” by TO, which was used in 12th category including

motorcycle, car and etc.

5. Relevant cases sharing – Land Rover

5-2-2 Details to Land Rover versus Geely’s “陆虎”(“LUHU”) registered trademark invalid

TO

TRAB

Court

The Court revoked the decision of TRAB and granted invalidation of Geely’s “陆虎”(“LUHU”) registered trademark 16

Thank You!

Professor David Chen, PhD

E-mail: [email protected]

Mobile: +86-1380-1934-356

Article 13 Clause 2-3

In the event of an application for registration of a trademark that is a reproduction, imitation, or translation of

another's well-known trademark not registered in China on same or similar goods, and consequentially is likely to

create confusion, the application shall be rejected and the trademark shall be prohibited from use.

In the event of an application for registration of a trademark that is a reproduction, imitation, or translation of

another's well-known trademark registered in China on different or dissimilar goods, and consequentially is likely to

create confusion and cause damage to the interests of the registrant for the well-known trademark, the application

shall be rejected and the trademark shall be prohibited from use.

APPENDIX

Back to Related Page

Article 15

Where an agent or representative registers, in its own name, a trademark of one of its principals without

authorization, and the principal opposes the registration, the trademark shall not be registered and shall be

prohibited from use.

An application for registering a trademark on the same or similar goods shall not be approved if: the trademark

under application is identical with or similar to an unregistered trademark already used by another party; the

applicant clearly knows the existence of the trademark of such another party due to contractual, business or other

relationships with the latter other than those prescribed in the preceding Paragraph; and such another party raises

objections to the applicant's trademark registration application.

Article 16

Where a trademark contains a geographical indication of goods and the goods are not from the region indicated

therein, thus misleading the public, the trademark shall not be registered and shall be prohibited from use.

However, those having been registered in a bona fide manner shall remain valid.


Article 30

If a trademark for which a registration application is filed fails to comply with the relevant provisions of this Law or

is identical or similar to another's trademark that has been registered or preliminarily approved for use on the

same or similar goods, the Trademark Office shall reject the application, and no publication shall be made.

Article 31

If two or more applicants apply for registration of the same trademark or a similar trademark for use on the same

or similar goods, the trademark application that is filed first shall be preliminarily approved, accompanied by a

publication thereon. If the applications are filed on the same day, the trademark that is used first shall be

preliminarily approved, accompanied by a publication thereon, and the application(s) of the other applicant(s)

shall be rejected and no publication shall be made.

Article 32

An application for trademark registration shall not prejudice any pre-existing right of others. It is prohibited to

forestall the registration, through any improper means, of a trademark that is already used by another party and

has produced a certain influence.


Article 10

The following signs shall not be used as trademarks:

(1) Those identical with or similar to the State name, national flag, national emblem, national anthem, military flag, army emblem,

army songs or medals of the People's Republic of China; and those identical with the names or emblems of Central State organs,

the names of the specific locations that are the domiciles of the Central State organs, or the names or designs of landmark

buildings;

(2) Those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries,

except with the consent of the governments of the countries involved;

(3) Those identical with or similar to the names, flags or emblems of international inter-governmental organizations, except with

the consent of the organizations concerned or except where the likelihood of misleading the public is slim;

(4) Those identical or similar to official signs or hallmarks indicating control or warranty, except as otherwise authorized;

(5) Those identical or similar to the name or sign or mark representing "Red Cross" or "Red Crescent";

(6) Those with a nature of national discrimination;

(7) Those that are deceptive and are likely to cause public confusion in terms of the quality, other characteristics or place of

production of relevant goods;

(8) Those detrimental to socialist morality and custom or having other ill effects.

Names of administrative divisions at or above the county level and foreign place names that are known to the public shall not be

used as trademarks, unless any such name has other meanings or is an integral part of a collective or certification mark. If a

trademark containing a place name has already been registered, the trademark shall remain valid.


Article 11

The following signs shall not be registered as trademarks:

(1) Those consisting only of generic names, devices, or model numbers of the goods concerned;

(2) Those consisting only of a direct representation of the quality, primary raw materials, functions, intended purposes, weight,

quantity, or other characteristics of the goods concerned;

(3) Those otherwise lacking distinctive features.

The signs mentioned in the preceding paragraph may be registered as trademarks after they have acquired distinctiveness and

become easily distinguishable through use.

Article 12

With respect to a three-dimensional mark as the subject matter under a trademark registration application, registration of that

mark shall be prohibited if its shape only represents the nature of the product, or its shape is required for achieving a

technological result, or its shape adds substantial value to the product.


Article 31 of 2001 Trademark Law

An application for trademark registration shall not prejudice any pre-existing right of others. It is prohibited to forestall the registration, through any improper means, of a trademark that is already used by another party and has produced a certain influence.


Documents

Litigating before the Boards of Appeal of the State ... › tunnel-web › secure › webdav › ... · 5/5/2016 · final examination announcement will be issued 7 . 3. The disputes