Rights owners need to have closer control and understanding of what and how evidence is being lodged with the CTMO and TRAB in order for this evidence to be fully weighed and for it be the most effective in their cases. Cases of evidence not being explained, translated or proper arguments being raised continue to plague the Chinese trademark examiners’ workload.
In an attempt to further standardize the trademark practice in China and increase the quality of trademark agency work, the SAIC TRAB have issued trial rules on what and how documents and evidence can be lodged: “Rules on Standardizing the Application Materials Lodged to the TRAB by Trademark Agency Organizations” (Trial Rules). These Trial Rules were effective as of March 1, 2013.
Many of the requirements in the Rules were well established in trademark practice, however they have now been brought together in a clear list of Trial Rules that agencies are expected to adopt, or face their applications to the TRAB being rejected. The Trial Rules include:
- Clearly stating the legal and factual reasons of a case (though these can be simplified at a first step if the review deadline is not over, but these must not be left out) ;
- POAs should be originals for domestic firms or individuals, but for foreign firm or individuals copies can be lodged, but they must be stamped with the relevant agency’s chop. Where necessary as per the examiner’s request, the original POA should however be provided, as well as the necessary notarized/legalized documents;
- clarification on the format to be used for evidence including both documentary, and product evidence - key evidence should be submitted on paper. Newspapers and magazines should also clearly demonstrate the relevant name and publication date.
- confirmation on how to deal with confidential information not to be passed to the opposite side - however without the chance for examination by the other side, such evidence may be less persuasive.
- requirement to clearly state the origins and evidentiary goal of relevant evidence (special attention should be paid to time and geographic issues with the evidence).
- requirement that foreign written documentation should be translated into Chinese or face rejection - if they have been accepted without a translation, they will be dealt with under rule 44 of the TRAB Regulations.
Unprofessional and non-standard practices by certain trademark agencies has been a major concern for the SAIC in recent years. This move to further clarify trademark practice should be applauded, and has been further standardized in the latest draft of the PRC TM LAW.