PROVISIONS ON SEVERAL ISSUES CONCERNING THE HEARING OF ADMINISTRATIVE CASES ON GRANTING AND AFFIRMING TRADEMARK-RELATED RIGHTS (DRAFT FOR COMMENTS) (“DRAFT”) (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）), ISSUED BY THE SUPREME PEOPLE'S COURT
The Draft aims to address emerging difficulties in identifying trademark-related rights and to supplement the PRC Trademark Law and its implementing rules. Further to the previous version of the Provisions of the Supreme People's Court on Several Issues concerning the Hearing of Administrative Cases on Granting and Affirming Trademark-related Rights, enacted on April 20, 2010, the Draft focuses on the following:
- It aims to prevent massive trademark squatting, providing that, where someone (i) applies to register a large number of trademarks that are identical or similar to other relatively well-known trademarks or relatively well-known location names with apparent lack of real intention to use such trademarks, or (ii) applies for a large number of trademarks without justification, the decision of the Trademark Review and Adjudication Board (“TRAB”) rejecting these applications or invalidating these trademarks will be upheld by the court.
- The Draft provides a special case deemed as “other adverse effects”which does not allow a sign to be used as a trademark under article 10 of the PRC Trademark Law where someone applies to register the name of a deceased natural person as a trademark without the authorization of the decedent's heir, which could lead the public to associate the product bearing the trademark with the natural person.
- The Draft provides that, when deciding whether a subsequent trademark should not be registered or should be declared invalid because it duplicates, imitates or translates another prior unregistered well-known trademark, the following aspects must be taken into account:
- The degree of similarity between the two trademarks.
- The degree of similarity or association between the products that bear the two trademarks.
- The degree of distinctiveness and reputation of the prior trademark.
- The degree of attention from the pertinent public.
The following aspects will be taken into account if a trademark duplicates, imitates or translates another prior registered well-known trademark:
The reputation of the prior trademark.
- The degree of distinctiveness of the prior trademark.
- Whether the subsequent trademark is similar to the prior trademark.
- Information on the products that bear the two trademarks.
- The degree of awareness of the prior trademark by the pertinent public of the subsequent trademark.
- Information on the use by other market players of trademarks similar to the prior trademark.
- The Draft specifies the circumstances under which “malicious intent” is considered:
- Regarding trademark squatting with improper means, in general, if the trademark already in use has some influence, and the trademark applicant knows or should have known the trademark, the trademark applicant may be presumed to have malicious intent.
- Regarding duplication, imitation or translation of well-known trademarks, if the first trademark was well known through use before the date of application for registering the disputed trademark, and the applicant of the disputed trademark should have known this, it may be presumed that the applicant of the disputed trademark has malicious intent in applying to register this trademark.
Date of issue: October 14, 2014.