Since the implementation of the Chinese Trademark Law 2001, the courts (the Beijing First Intermediate Court as the first instance court and the Beijing High Court as the second instance court) have been granted the final adjudication power for administrative cases involving the authorization and confirmation of trademark rights (hereinafter referred to as “Trademark Administrative Cases”), where interested parties sued the Trademark Review and Adjudication Board (TRAB) to court in connection with its administrative decisions in trademark rejection review, trademark dispute, and trademark cancellation review. The TRAB bears the burden of proof because of the nature of the review of trademark administrative proceedings, except under exceptional circumstances. Generally, evidence not presented during trademark review proceeding is not the basis of the TRAB’s decision, and should not be relied on by the court. But the court may consider some new evidence, where appropriate, in individual cases. This leads to the issue of the admissibility of new evidence in the trial of Trademark Administrative Cases.

  1. Types of new evidence in Trademark Administrative Cases and the courts’ basic attitude

Although the TRAB bears the burden of proof in Trademark Administrative Cases, plaintiff or a third party always actively submits a large number of new evidence to the court, including newly formed evidence, corroborative evidence, and evidence not previously presented to the TRAB without justified reasons. For evidence not previously presented to the TRAB without justified reasons, which is the most common “new” evidence, the court will generally not rely on it. We will focus on the admissibility of the other two types of new evidence.

  1. Newly formed evidence

The so-called “newly formed evidence” refers to the evidence formed after the expiration of the time limit of proof required for trademark review proceeding, or after the issuance of the review decision. The court usually considers such evidence with reference to rules of evidence in civil procedure. However, if the newly formed evidence could have been but has not been collected during the TRAB proceeding, it shall not be deemed as new evidence, and will generally not be adopted by the court.

  1. Corroborative evidence

Corroborative evidence in the court proceeding is the evidence that tends to support the fact that has already been supported by some initial evidence submitted to the TRAB. For such evidence, the court will determine whether to take it into consideration at its discretion. However, some of the so-called “corroborative evidence” is absolutely not corroborating evidence. For instance, in trademark opposition case where the plaintiff should prove its mark “has been prior used and has certain influence,” and the evidence shall be traced back prior to the application date of the disputed mark, if the plaintiff fails to submit such evidence in the review proceeding but supplements it as corroborative evidence to the court, such evidence will usually be deemed as evidence not presented to the TRAB without justified reasons, rather than corroborative evidence.

Based on our experience, if the party provides the notarized or legalized evidence to corroborate the authenticity of evidence in the review proceeding, the court will generally accept it. It is common practice that the TRAB will generally not require notarization and legalization of evidence originated from outside China, but the court imposes more stringent requirement for notarization and legalization. In view of this, the party usually submits the notarized and legalized evidence as corroborative evidence. In the administrative case regarding the opposition against “SHI SHI CHENG DA YAO FANG in Chinese & Design” represented by us on behalf of Ritz-Carlton, the internationally renowned hotel, we successfully convinced the first and second instance courts to accept our new evidence, namely, the original legalized copyright registration certificate, as corroborative evidence. We argued that Ritz-Carlton did submit the photocopy of copyright registration certificate to the TRAB before the TRAB rendered its decision, and the TRAB should have requested Ritz-Carlton to submit the legalized copy of the copyright registration certificate if it deems necessary according to the TRAB Rules. Accordingly, the legalized document supplemented in the court proceeding should be deemed as corroborative evidence to prove the authenticity of evidence submitted to the TRAB. [1]

  1. Basic approach of the courts in typical cases

According to Paragraph 2 of Article 28 of the Interpretation on Several Issues concerning the Implementation of the Administrative Procedure Law, “if the plaintiff or a third party submits any rebuttal argument or evidence in the court proceeding, which is not presented in the administrative proceeding, the defendant may supplement evidence with the consent of the court.” This provision actually provides a legal basis for the plaintiff or a third party in the Trademark Administrative Cases to submit new evidence, and also demonstrates the possibility of the court’s acceptance of new evidence.

In judicial practice, the courts tend not to accept new evidence in general, but there are also precedents where the courts adopted the evidence newly submitted based on the principles of fairness and justice and the interests of the parties. In the administrative case regarding opposition against the “Johnson in Chinese & qiangsheng” mark, the first instance court held that the evidence submitted by Johnson & Johnson during the court proceeding was not contemplated by the TRAB, and should not be accepted as corroborative evidence. [2] But the second instance court adopted the corroborative evidence submitted by Johnson & Johnson and arrived at a different conclusion.

An alternate approach adopted by the courts is that the courts did not directly accept the new evidence, but ordered the TRAB to re-examine the evidence. In the administrative case regarding opposition against “Power Dekor in Chinese & Design,” the first instance court held that the new evidence submitted during the court proceeding shall not be accepted since it is not a basis for the TRAB’s decision. But as a large number of the new evidence is directly related to the dispute in this case, if not considered, not only would the parties’ legitimate interests be affected, it would also contradict with the objective truth. Whereas if directly adopted, it would also lead to the loss of administrative review procedure. In view of this, in order to achieve legal and social effects of judicial adjudication, the TRAB shall re-issue the decision relying on both the original evidence and the newly submitted evidence by the parties. [3] The second instance court affirmed the decision. [4]

This hotly debated issue is also involved in the typical trademark dispute case of Ritz-Carlton v. the TRAB and Chengdu Zhizhi Real Estate Development Co., Ltd. we handled in 2012. In this case, the TRAB and the courts have different views as to whether the “RITZ-CARLTON” mark could be recognized as a well-known mark, and the focus lies in the admissibility of the large amount of evidence newly submitted during the court proceeding. We did a lot of research and supplemented various evidence such as search results from the China National Library, Shanghai Library, China National Knowledge Infrastructure (CNKI), People’s Daily, Xinhua Net, etc, as corroborative evidence. Meanwhile, considering part of the evidence submitted during the TRAB proceeding are printed web pages, we further submitted the notarized documents as corroborative evidence. In addition, we categorized the evidence in groups, taking into account the time, purpose of proof, and whether the evidence has been submitted during the TRAB proceeding to facilitate the court in deciding which groups of evidence are admissible. After a great deal of effort, we successfully convinced the courts to accept our new evidence and obtained well-known mark recognition for Ritz-Carlton.

The Beijing High Court affirmed in its judgment that the evidence supplemented by Ritz-Carlton is to strengthen the evidence submitted during the TRAB proceeding, in which Ritz-Carlton submitted substantial evidence to support its arguments. It would seriously affect Ritz-Carlton’s rights and interests if the evidence was not to be admitted, especially where that the “RITZ-CARLTON” mark may be recognized as a well-known mark if the evidence submitted during the TRAB proceeding and court proceeding has been taken into consideration comprehensively. Further, the rejection of new evidence would be contrary to the principle of fairness and justice. [5]

From the above we can see the courts’ attitude towards the new evidence in Trademark Administrative Cases differ. Trademark Administrative Cases are very special, and the judgments thereof are not only related to the interests of trademark right holders, but also related to public interests in the circulation area.

  1. Principle of changed circumstances in Trademark Administrative Cases

As mentioned above, the court’s review is largely based on the admission of the parties’ claims and supporting evidence by the TRAB. It is worth noting, however, the courts tend to explore how to deal with the new evidence and new facts, and apply the principle of changed circumstances in Trademark Administrative Cases.

  1. New facts that affect trademark registration

In the administrative case of the rejection of trademark application for “ADVENT,” the Supreme Court finds that the cited mark became void due to non-use cancellation in the court proceeding, and thus the hurdle preventing the trademark application to be approved in this case would not exist. Under such circumstance, if the new fact was mechanically excluded from the scope of judicial review, it would be unfair to the trademark applicant. On the other hand, the application for trademark registration has not been completed during the court proceedings, and thus important facts occurred that may affect trademark registration shall be included in the scope of judicial review. [6]

In the administrative case of the rejection of trademark application for “GAPKIDS,” the Beijing High Court finds that, given that the cited mark has been disapproved for registration by the Supreme Court in its Administrative Judgment (2012) Xing Ti Zi No. 10, the hurdle preventing the said mark to be registered no longer exists. However, considering the Supreme Court’s decision, as new facts, occurred after the TRAB’s decision had been rendered, it cannot serve as the basis of the TRAB’s decision. The judgment of the second instance court is based on the new evidence and thus the litigation costs shall be incurred by the plaintiff GAP (ITM) INC. [7]

  1. New evidence that affects the distinctiveness of trademark

In the administrative case of the rejection of trademark application for “BEST BUY & Design,” the TRAB rejected the application on the ground that the use of the two words as a trademark on certain services merely directly indicates the quality and characteristics of such services. The applicant, Jia Xuan Company, appealed to the court and provided various evidence to prove this mark has been actually used in China, thereby acquired distinctiveness through use. However, both the Beijing First Intermediate Court and the Beijing High Court sustained the rejection decision without considering the new evidence. The Supreme Court subsequently held after hearing, that the distinctiveness of a trademark is a dynamic process of change. Accordingly the adjudication will be based on relevant changing facts. The TRAB and the two instance courts failed to comprehensively consider the distinctiveness of the trademark, and did not consider the new evidence submitted by the applicant. As a result, the TRAB and the two instance courts wrongly held that the trademark lacks distinctiveness. The Supreme Court overturned the rulings. [8]

In summary, for plaintiff or a third party, on the one hand, it is recommended to make a good preparation and collect as much evidence as possible during the TRAB proceeding, so as to avoid the risk of not being admitted by the court later. On the other hand, the courts do not absolutely ignore new evidence submitted by the parties. Therefore, if new evidence submitted substantially affects the outcome of the case and interests of trademark right holders, the courts may adopt it at their discretion. As a result, it is also encouraged to do a further search and submit new evidence that substantially affects the case during the court proceeding and catch the last chance to protect or defend trademark rights.