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
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
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
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