Regulation of the Supreme People’s Court on Several Issues concerning the Adjudication of Administrative Cases of Trademark Right Granting and Verification
(Adopted at the 1703th meeting of the Judicial Committee of the Supreme People's Court on December 12, 2016; amended in accordance with the Decision by the Judicial Committee of the Supreme People's Court at the 1823rd meeting on December 23, 2020, regarding the revision of 18 IP-related judicial interpretations, including Interpretation on Several Issues concerning the Application of Laws in Handling Patent Infringement Dispute Cases (II)).
To correctly adjudicate administrative cases concerning trademark right granting and verification, the regulation is hereby formulated in accordance with the Trademark Law of the People's Republic of China (hereinafter referred to as Trademark Law), and Administrative Procedure Law of the People's Republic of China (hereinafter referred to as Administrative Procedure Law), with judicial practice taken into account.
Rule 1 Administrative cases concerning trademark right granting and verification specified in this regulation refer to lawsuits initiated by the opposite party or an interested party with the people’s court, challenging the administrative acts made by the China National Intellectual Property Administration (CNIPA) concerning trademark review on refusal, review on disapproving trademark registration, review on trademark cancellation decision, trademark invalidation declaration, and review on invalidation declaration decision.
Rule 2 The scope of judicial examination on trademark right granting and verification administrative acts shall be generally determined based on the plaintiff's claims and grounds. Where specific claims are not raised by the plaintiff, but the concerned determination made by the CNIPA is patently improper, the people’s court may examine relevant subject matter and render a judgment after hearing opinions from both parties.
Rule 3 “Identical with or similar to” the name, among other elements, of the People's Republic of China as prescribed in Article 10(i)(1) of the Trademark Law refers to a mark that is identical with or similar to the name of the state as a whole.
Where a mark containing the name of the People's Republic of China, among other elements, is not identical with or similar thereto as a whole, but may damage the dignity of the state if registered as a trademark, the people's court may determine that it falls under Article 10(i)(8) of the Trademark Law.
Rule 4 Where a mark logo or its constituent elements are deceptive and likely to cause mislead the concerned public as to the quality or other characteristics or the place of origin of the goods, if the CNIPA determines that it falls under Article 10(i)(7) of the Trademark Law as amended in 2001, the people's court shall uphold such decision.
Rule 5 Where a mark or its constituent elements may cause adverse effect on public interests and public order of China, the people's court may determine that it falls under “having other unwholesome influences” as prescribed in Article 10(i)(8) of the Trademark Law.
An application for registration of a name of a public figure in the political, economic, cultural, religious, ethnic and other fields as a trademark falls under “having other unwholesome influences” as prescribed in the preceding paragraph.
Rule 6 Where a mark includes a geographical name of county-level or higher administrative divisions or any foreign geographical name known to the public and other elements but carries a meaning distinct from the geographical name itself, the people's court shall determine that it does not fall under Article 10(ii) of the Trademark Law.
Rule 7 When examining whether a mark has distinctiveness, the people's court shall determine whether the mark has distinctiveness as a whole based on the general knowledge of the relevant public using the designated goods. A mark containing descriptive elements shall be determined to have distinctiveness if such elements do not diminish its overall distinctiveness or if the descriptive sign is expressed in a unique manner enabling the relevant public to identify the source of goods.
Rule 8 When a contested mark is in foreign language, the people's court shall determine whether the mark has distinctiveness as a whole based on the general knowledge of the relevant public within the territory of China. Where the literal meaning of such mark may diminish its distinctiveness on designated goods, but the relevant public has limited awareness of the meaning and is able to identify the source of goods, it may be deemed distinctive.
Rule 9 Where an application for registration of a three-dimensional mark consists of solely the shape or part of the shape of the goods, and it is difficult for the relevant public to recognize it as an indication of source under normal circumstance, such mark shall be deemed lack of inherent distinctiveness.
The fact that a shape is independently created or first used by the applicant does not necessarily confer inherent distinctiveness as a mark.
The mark previously mentioned in the first paragraph that has been used for a prolonged period or extensively in commerce, thereby enabling the relevant public to identify the source of goods through such use, may be recognized as having acquired distinctiveness.
Rule 10 Where a contested mark is a statutory commodity designation under law or a conventional product name, the people's court shall determine it falls under Article 11(i)(1) of the Trademark Law. A mark deemed to constitute a generic product name under statutory provisions or the national/ industry standards shall be recognized as such. If the relevant public predominantly perceives a certain name as referring to a category of goods, it shall be deemed a conventional product name. Designations listed in professional reference books or dictionaries may serve as reference for determining conventional product names.
A conventional generic name shall generally be determined based on the common understanding of the relevant public nationwide. Where a specific commodity title has been formed on the relevant market due to historical traditions, customs, geographical environment or other factors and is widely recognized by market participants, people's courts may deem it as a generic product name.
Where the applicant for a contested mark either knows or should know that the mark applied for registration constitutes a generic product name in specific regions, the people's court may determine the mark as a generic product name.
The people's court shall assess whether a contested mark constitutes a generic product name primarily based on the factual status as of the date of application. Where material changes occur in the factual status by the date of registration, the assessment shall be based on the factual status as of the date of registration.
Rule 11 Where a mark solely or predominantly describes the quality, main raw materials, function, purpose, weight, quantity, place of origin and other characteristics of the designated goods, the people's court shall determine that it falls under Article 11(i)(2) of the Trademark Law. Where a mark or its constituent elements imply the characteristics of the designated goods, but do not diminish its function of identifying the source of goods, it shall not be subject to the provisions of this subparagraph.
Rule 12 Where a party claims that a contested mark constitutes reproduction, imitation or translation of an unregistered well-known trademark and seeks to oppose its registration or declare its invalidation pursuant to Article 13(ii) of the Trademark Law, the people's court shall comprehensively assess the following factors and their interrelationships and conclusively determine whether it is likely to cause confusion:
(1) the similarity degree of the marks;
(2) the similarity degree of the goods;
(3) the distinctiveness and popularity of the mark seeking protection;
(4) the degree of attention of relevant public; and
(5) other relevant factors.
The subjective intent of the mark applicant and evidence of actual confusion may be considered as factors in determining the likelihood of confusion.
Rule 13 Where a party claims that a contested mark constitutes reproduction, imitation or translation of its prior registered well-known trademark and seeks to oppose its registration or declare its invalidation pursuant to Article 13(iii) of the Trademark Law, the people's court shall take into account the following factors to assess whether the use of the contested mark creates a sufficiently close connection with the well-known trademark, thereby misleading the public and causing harm to the rights of the well-known trademark owner:
(1) the distinctiveness and popularity of the cited prior mark;
(2) whether the trademarks are confusingly similar;
(3) goods designated to use the trademark;
(4) the degree of consumer overlap and reasonable attention of relevant public; and
(5) the lawful use of a mark similar to the cited prior mark by other market participants or other relevant factors.
Rule 14 Where a party claims that a contested mark constitutes reproduction, imitation or translation of its prior registered well-known trademark and shall not be registered or shall be declared invalid, and the CNIPA supports the party's claim in accordance with Article 30 of the Trademark Law, the people's court may adjudicate the case in accordance with Article 30 of the Trademark Law if the contested trademark has been registered for less than five years after hearing the parties’ opinions; for a contested mark registered for five or more years, the people's court shall apply Article 13(iii) of the Trademark Law for adjudication.
Rule 15 Where a trademark agent, representative or other parties in agency/distribution relationships applies for registration in its own name of a mark identical with or similar to the principal’s mark on identical or similar goods/services without authorization, the people's court shall adjudicate in accordance with Article 15(i) of the Trademark Law.
Where an agent or representative specified in the preceding paragraph applies for registration of the principal’s mark during the consultation stage for establishing agency/representation relationships, the people's court shall adjudicate in accordance with Article 15(i) of the Trademark Law.
Where there is kinship or other specific identity relationships between a trademark applicant and an agent or a representative, it may be presumed that the application was filed in collusion with said agent or representative in bad faith. The people's court shall adjudicate in accordance with Article 15(i) of the Trademark Law.
Rule 16 The following circumstances may constitute “other relations” as defined in Article 15(ii) of the Trademark Law:
(1) where the trademark applicant has kinship with the prior user;
(2) where the trademark applicant maintains employment relations with the prior user;
(3) where the trademark applicant's business address is adjacent to that of the prior user;
(4) where the trademark applicant negotiated with the prior user regarding agent/representative relations, but failed to establish such relations;
(5) where the trademark applicant has engaged in negotiations with the prior user regarding contractual/business relations, even if no formal agreement was reached.
Rule 17 Where an interested party of a geographical indication opposes registration or seeks invalidation of a mark in accordance with Article 16 of the Trademark Law, if the goods designated to use the contested trademark are not identical with those covered by the geographical indication, whereas the interested party demonstrates that use of the mark on such goods is likely to mislead the concerned public into believing the goods originate from the region and possess specific quality, reputation or other characteristics attributable to the region, the people's court shall support such claim.
If a geographical indication has been registered as a collective mark or certification mark, the the registered organization or an interested party may claim rights in accordance with this Article or otherwise under Article 13 and Article 30 of the Trademark Law.
Rule 18 The prior existing rights under Article 32 of the Trademark Law refer to civil rights or other legally recognized rights and interests enjoyed by the parties as of the filing date of the contested mark. Where such prior rights have lapsed by the date of approving registration, the registration of the contested mark shall not be invalidated.
Rule 19 Where a party claims that a contested mark infringes its prior copyright, the people's court shall, in accordance with the Copyright Law and other relevant provisions, adjudicate whether the subject matter qualifies as a work, whether the party is the copyright owner or an interested party that is entitled to the copyright, and whether the contested mark infringes upon the copyright.
Where a mark qualifies as a work protected under the Copyright Law, the design drafts, original copies, rights acquisition contracts, copyright registration certificates prior to the filing date of the contested mark, and other relevant documents may serve as prima facie evidence for establishing the copyright ownership.
Publicly available records of trademark applications, registration certificates and other relevant documents may serve as prima facie evidence for determining whether the applicant is entitled to claim the copyright ownership of the mark.
Rule 20 Where a party claims that a contested mark infringes his/her right to name, the people's court shall determine such mark constitutes infringement, if the relevant public believe that the contested mark refers to this natural person, and that goods bearing such mark has obtained the authorization from or has specific relations with this natural person.
Where a party asserts his/her right to name through a pseudonym, stage name, translated name or other specific designations, the people's court shall support such claim, if the specific name has acquired substantial public reputation, a stable correspondence has been established between the name and the natural person, and the relevant public consistently identifies the natural person by such name.
Rule 21 Where a party claims that its trade name has acquired a certain level of market recognition, and another party, without authorization, applies to register a trademark identical or similar to that trade name, which is likely to cause confusion among the relevant public regarding the source of the goods, and the party asserts this as a prior right, the people's court shall support such a claim.
Where a party initiates a claim based on the abbreviated form of an enterprise name that has acquired a certain level of market recognition and has established stable corresponding relationship with the enterprise, the preceding paragraph shall apply.
Rule 22 Where a party claims that a contested mark infringes the copyright of the character image, the people's court shall adjudicate in accordance with Rule 19 of this Regulation.
For a work within the copyright protection period, if the title of the work or the names of the characters in the work enjoys significant public recognition, using them as trademarks on related goods is likely to cause the relevant public to mistakenly believe that they have been authorized by the rights holder or that there is a specific connection with the rights holder, if a party claims that this constitutes prior rights and interests, the people's court shall support such a claim.
Rule 23 Where a prior user claims that a trademark applicant preemptively registers a trademark that the prior user has already used and has gained a certain degree of fame by unfair means, and the applicant knew or should have known of the prior-used trademark, it may be presumed to constitute “preemptive registration by unfair means”, unless the trademark applicant demonstrates its absence of malicious intent to exploit the goodwill of the trademark.
Where a prior user demonstrates that its prior trademark has been continuously used for a certain period, in specific regions, with substantial sales volume and advertising, the people's court may determine that the trademark has gained a certain degree of fame.
Where a prior user claims that a trademark applicant has violated Article 32 of the Trademark Law by applying for registration of a trademark that it has previously used and has gained a certain degree of fame, but on goods not similar to those of the prior user, the people's court shall not support such claim.
Rule 24 Where a party disrupts the order of trademark registration, impairs public interests, illegally occupies public resources or seeks illicit interests by means other than deceit, the people's court may determine that it falls under “other unfair means” prescribed in Article 44(i) of the Trademark Law.
Rule 25 When determining whether the applicant of a contested mark has engaged in “bad faith registration” of a well-known trademark of another party, the people's court shall comprehensively consider such factors as the popularity of the cited trademark(s), the grounds for applying for the contested mark, and the specific circumstances of using the contested mark to determine the contested mark applicant’s subjective intent. Where the cited trademark(s) enjoy(s) a high degree of fame and the contested trademark applicant lacks justifiable reasons, the people's court may presume that such registration constitutes “bad faith registration” as specified in Article 45(i) of the Trademark Law.
Rule 26 The use of a trademark by the trademark owner itself, by others with the owner's permission, and any other use not contrary to the owner's will may all be recognized as use as specified in Article 49(ii) of the Trademark Law.
Where a trademark actually used is slightly different from the trademark approved for registration but does not change its distinctive character, such use may be deemed as use of the registered trademark.
Where a registered trademark is not acually used but only transferred or licensed, or if only the trademark registration information is published or a declaration of exclusive rights to use the registered trademark is made, it shall not be deemed as trademark use.
Where a trademark owner has the genuine intention to use a trademark and has made necessary preparations for the actual use, but has not actually used the registered trademark for other objective reasons, the people's court may determine that it has justifiable reason.
Rule 27 Where a party asserts that any of the following circumstances of the CNIPA constitute “violation of statutory procedures” as prescribed in Article 70(3) of the Administrative Procedure Law, the people's court shall support such claim:
(1) Omitting review grounds raised by a party, resulting in actual prejudice to the party's rights;
(2) Failure to inform the composition of the collegial panel during the review proceeding, whereas upon examination valid grounds for recusal are established yet remain unaddressed;
(3) Failure to notify eligible party to participate in the review proceeding and such party explicitly raises an objection;
(4) Other circumstances constituting a violation of statutory procedures.
Rule 28 Where the grounds for the CNIPA to refuse, disapprove or invalidate a contested mark no longer exist during adjudication of an administrative case involving trademark right granting and verification, the people's court may revoke the CNIPA’s decision based on new facts, and order the CNIPA to render a new decision based on the changed circumstances.
Rule 29 Where a review application is filed based on evidence newly discovered after the original administrative act, evidence that could not have been obtained due to objective reasons or could not be provided within the prescribed time limit during the original administrative procedures, or based on new legal basis, such application shall not be deemed as a repeated review application “based on the same facts and grounds”.
Where, during the trademark review on refusal procedure, the CNIPA preliminarily approves publication of a trademark application on the ground that the application is neither identical with nor similar to the cited trademark(s) on the same or similar products, the following circumstances shall not constitute repeated filing of review application “based on the same facts and grounds”:
(1) Where the holder or an interested party of the cited trademark(s) raises an opposition based on the cited trademark(s), and the CNIPA supports such opposition, the trademark applicant against whom the opposition is raised applies for review;
(2) Where the holder or an interested party of the cited trademark(s), based on such cited mark(s), applies for invalidation declaration after the trademark application is approved for registration.
Rule 30 Where relevant facts and the application of law have been conclusively determined in an effective judgment of the people's court, any subsequent lawsuit filed by the opposite party or an interested party against a new decision rendered by the CNIPA based on such effective judgment shall not be accepted or shall be dismissed if already accepted.
Rule 31 This Regulation come into force on March 1, 2017. The people's court may refer to this Regulation when adjudicating administrative cases involving trademark right granting and verification in accordance with the Trademark Law as amended in 2001.
