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
New policy on review of
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
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
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
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