最高人民法院就《关于审理商标授权确权行政案件若干问题的规定(征求意见稿)》公开征求 意见 (10/14/2014)

On Oct. 14, 2014, the Supreme People’s Court released for public comments the proposed draft Provisions on Several Issues Concerning the Trial of Administrative Cases Involving the Granting and Determination of Trademark Rights (Draft for Comments) (the Draft Provisions). The public comment period ended Nov. 15, 2014.

The Draft Provisions aim to clarify and unify the trial standards for administrative cases involving the granting and determination of trademark rights. Key developments of the Draft Provisions include:

Legal Consequences of Large-Scale Preemptive Registrations

The Draft Provisions contain a specific provision applicable to the situation where an applicant makes large-scale preemptive registrations. Under the Draft Provisions, the Trademark Review and Adjudication Board (the Trademark Board) and the court may reject trademark applications or hold registration invalid if it determines that an applicant has no true intention to use the mark, makes large-scale applications for registration of trademarks that are identical with or similar to existing popular marks, or makes large- scale trademark applications without justifiable reasons. Currently there are no specific provisions in the PRC Trademark Law (the Trademark Law) targeting large-scale preemptive registrations.

Clarification of “Adverse Effects”

The current Trademark Law prohibits the use of marks having “adverse effects”; however, the term “adverse effects” is not defined. The Draft Provisions propose to define “adverse effects” as the passive and negative influence that the signs or other elements of the trademarks may have on the social interests or public order regarding the politics, economy, culture, religion and ethnic groups of China.

Further, the Draft Provisions specify two types of marks that should be deemed to have “adverse effects”: (1) marks which are names of public figures without the approval of such public figures; (2) marks that are names of deceased people without the approval of the heirs of such deceased. 

Measurement Standards for Infringement to Well-known Trademarks

To protect well-known marks, the Trademark Law prohibits the registration of marks that are copies, imitations or translations of well-known marks in the following two circumstances:

  1. For same or similar goods: if the marks are likely to “lead to confusion.”
  2. For difference or dissimilar goods: if the marks will “mislead the public” and if the well-known marks are registered in China.

The Draft Provisions specify that in determining whether a mark may “lead to confusion” in the first circumstance, the following factors should be taken into account: (1) the degree of similarity of the two marks; (2) the degree of similarity of the goods; (3) the significance and awareness of the well-known mark; and (4) the degree of relevant public attention.

In determining whether a mark will “mislead the public,” the following factors should be taken into account: (1) the significance and awareness of the well-known mark; (2) the degree of similarity between the marks; (3) the commodities on which the two trademarks are used; (4) the acknowledgement degree of the target customers of the applicant mark towards the well-known mark; and (5) the degree of the mark being used for other markets.

Conclusion

The Draft Provisions clarify a few concepts under the Trademark Law and provide more detailed trial standards for administrative cases involving the granting and determination of trademark rights.

  • Provisions of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases Involving the Granting and Determination of Trademark Rights (Draft for Comments)
  • -《最高人民法院关于审理商标授权确权行政案件若干问题的规定(征求意见稿)》
  • Issuing authority: Supreme People’s Court
  • Date of issuance: Oct. 14, 2014 / Public Comment Deadline: Nov.15, 2014