The Trademark Review and Adjudication Board of China (TRAB) recently published a review of its own decisions made in 2015 and then subjected to judicial review. TRAB won 70.8% of the 7,632 cases before the courts. For the cases it lost, the top reason is on the similarity analysis of trademarks. Major differences between TRAB and the court's practice on similarity includes the following:

  1. Different from TRAB, the court not only compares the two parties' marks in their visual, phonetic and conceptual features, but also takes the use status of the marks into consideration. Specifically, if the later-filed mark has acquired certain fame in the market through use, the court normally considers the mark distinguishable from the prior mark on the ground that it can be correctly identified by the relevant public.
  2. If the mark of a pending application is similar to a cited mark but the applicant already holds a prior registration for the same/similar mark, the court tends to regard that mark as an extension of the prior registration and thus allow its registration.
  3. The court is more likely to accept coexistence agreements than TRAB.

Other major reasons for reversals by the court include:

Reasons for reversal

2015

2014

Rebus sic stantibus

15%

8%

Similarity of goods

11%

16%

Acceptance of new evidence

6.2%

3.8%

Recognition and protection of well-known trademarks

6%

10%

Decision on non-use cancellation

6%

2%

Determination on other unhealthy influence as stipulated in Article 10. 1. 8

5%

10%