Provisions of the Supreme People’s Court on Several Issues concerning the Trial of Administrative Cases Involving the Authorization and Determination of Trademark Rights (“Provisions”) will come into force on 1 March, 2017

In order to apply a consistent judicial rule in dealing with those critical problems, which frequently raised in the trial of administrative cases involving the authorization and determination of trademark rights in the recent years, based on the “Opinions of the Supreme People’s Court on Several Issues concerning the Trial of Administrative Cases Involving the Authorization and Determination of Trademark Rights” (“Opinions”) released by the Supreme People’s Court in 2010, recently, the “Provisions” was released. The “Provisions” has highlighted the following aspects:

(1) The determination of “Likelihood of Confusion”

Article 12 of the “Provisions” has specified 4 listed factors and 1 general factor shall be taken into consideration comprehensively. There are, the degree of similarity of the marks of the trademarks, the degree of similarity of the goods, the distinctiveness and the extent to which they have become known, the degree of attention of the relevant public, and other relevant factors. In addition, Article 12 has also specified 2 factors for reference. There are, the intention of the applicant, and the evidence of actual confusion.

(2) To loose the burden of proof of the trademark owner on proving an applicant has registered a trademark by illegitimate means

Article 32 of the “Trademark Law” has prescribed an applicant shall not registered a trademark by illegitimate means. Per the “Opinions” released in 2010, the trademark owner should prove the applicant knows or should have known that a trademark with some degree of recognition has been used by another party, but nonetheless has procured its registration. However, the “Provisions” has adjusted this requirement as, the presumption rule could be applied. The presumption rule says if the trademark has some degree of recognition, and the applicant knows or should have known the trademark, if both requirements, then the applicant shall be determined as violating Article 32 of the “Trademark Law”, unless the applicant could prove it has not bad faith.

(3) Concerning the “Prior Right”

Article 18 of the “Provisions” has clearly stipulated, the “Existing Prior Right” prescribed in Article 32 of the “Trademark Law” shall include the civil rights or other legal rights and interests which shall be protected, in addition, all those rights or interests shall be granted before the date of filing a trademark application. Article 19 to 22 have furtherly stipulated the criteria on determining whether a copyright, name, title, copyright of the image of a character, the title of a piece of work, shall be deemed as the “Existing Prior Right”. Although those criteria are too general, the courts could take these criteria into consideration while hearing the relevant cases.
It is a pity that some articles in the draft have not been released in the “Provisions”, such as the articles about the massive trademark squatting and co-existence agreements. It is possible to say the judicial departments failed to agree on a unified and mature opinion on such issues.