Rachel Tan and Sophie Zhao
In July, the China Trade Mark Association held a seminar for Chinese trade mark practitioners. During this seminar, the Trade Mark Review & Adjudication Board (TRAB) discussed a number of policy changes, as well as guidelines for ‘well-known’ trade mark status which had been issued in April this year.
New policy on review of cases
A recently adopted TRAB policy introduces changes that will be important for many trade mark applicants in China.
In order to expedite the review process, the TRAB recently decided that it will, in future, suspend appeals only where the case against the cited mark is also being examined by the TRAB. In these cases, the TRAB will decide both the appeal and the case against the cited mark at the same time.
Where the case against the cited mark is pending before the China Trade Mark Office (CTMO), the TRAB will proceed with its consideration of the appeal and issue its decision without waiting for the CTMO’s decision. We can now expect a TRAB decision to be issued in around six months.
The TRAB’s new policy is likely to have unfortunate consequences for trade mark applicants: where an action against a cited mark is pending before the CTMO, the TRAB appeal is now almost certain to fail. This is because the TRAB’s decision is likely to be issued before a decision on the cited mark is made by the CTMO.
If the TRAB appeal does fail, applicants will have several options. They may lodge an appeal with the Court and if the cited mark is cancelled during the appeal, the Court may refer the matter back to the TRAB for further review. Or they may, if the cited mark is ultimately held to be valid or the CTMO’s decision that it should be cancelled is appealed, attempt to obtain a direction from the Court for suspension of the case. It should be noted, however, that the grant of such a request is entirely at the Court’s discretion and it is not yet clear what the Court’s general attitude to such requests will be.
These options are however costly and it is therefore likely that applicants will hesitate before adopting them, particularly in the current economic climate. Another option will be for applicants to re-apply to register the mark and explore other means of overcoming the citation. The obvious disadvantages of this course of action are the loss of priority and the possibility of further intervening rights which could impede the acceptance of the new application.
In any event, and in light of the TRAB’s new policy, the role of clearance searches is likely to increase in importance. Applicants should now consider taking action against any conflicting marks at a much earlier stage, preferably when they are located during a clearance search.
The TRAB’s new policy of reviewing the appeal against CTMO’s refusal to register and the action against the cited mark, at the same time, is a welcome change. The contemporaneous review of the two cases will ensure a consistent result. Although both the appeal and the cancellation action will be considered together, separate decisions will be issued for the two cases.
The shortening of the length of time for a TRAB decision to be issued could also be regarded as a positive step. Certainly the TRAB has committed extensive resources to speeding up the appeal process and removing the backlog of cases. It is hoped that fairness will not be compromised in the quest for expediency.
Review of procedural issues
In the past, the State Administration for Industry and Commerce had a separate legal department which dealt with appeals against CTMO’s refusal to register based on the failure to comply with formalities e.g. recordals of change of name/address/agent, assignments, renewals, cancellations and oppositions. Since 2009, the TRAB has taken over this role and has made it clear that CTMO decisions in matters of this kind are likely to be upheld unless the refusals were clearly erroneous.
Well-known mark guidelines
In April this year, the TRAB issued guidelines for the granting of well-known trade mark status. These guidelines indicate matters that will be taken into account and evidence that should be provided by the trade mark owner.
The new guidelines are intended to provide greater transparency and clarify the evidence required to support a well-known trade mark claim. The requirements are however more stringent than before and although the burden of proof for extremely famous foreign marks appears to have been reduced, well-known status may in general be harder to attain. In addition, the TRAB procedure for dealing with these claims has been made more complicated.