In order to save administrative resources, improve administrative efficiency, and protect the certainty of trademark allowance and confirmation, Article 62 of the Implementing Regulations of the Trademark Law stipulates the "Res judicata", which means that if the Trademark Review and Adjudication Board has made a ruling or decision on a trademark application, no one may re-submit further applications based on the same facts and grounds. However, an exception is made for invalidation proceedings filed with the Trademark Review and Adjudication Board after approval of registration undergoing the review of disapproval of trademark registration. This article does not comment on the content of the "exception clause," but only analyzes the preceding clause.
What situations constitute re-submit further applications based on "the same facts and grounds"? In the new examination application, if the applicant submits evidence that was not presented in the previous application, cites a new trademark or refers to new legal provisions, are these all not considered "the same facts and grounds"? This article will explain these questions with specific examples.
1. Whether the new evidence material can form "new facts"
In Article 29 of the Provisions on Several Issues Concerning the Trial of Administrative Cases of Trademark Allowance and Confirmation by the Supreme People's Court, it is stipulated that "an applicant's submission of evidence newly discovered after the original administrative act, or evidence that cannot be obtained or provided within the prescribed time limit due to objective grounds in the original administrative procedure, or an examination application based on new legal basis, does not constitute re-submitting an examination application with the same facts and grounds. "
From the above provisions, it is not difficult to see that if the new evidence material is newly discovered after the original administrative act, it does not constitute re-submitting an examination application with the same facts and grounds. However, in practical operation, the examination of new evidence material is not only limited to formal examination in terms of time but also includes substantive examination of the evidence material. That is, examination is based on whether the new evidence is sufficient to produce "new facts" that overturn the existing administrative ruling. Only when there are "new facts" as described above, that is, when the proved factual situation has undergone a substantial change, will it be determined that it does not constitute re-submitting an examination application with the same facts and grounds. In other words, whether the facts are the same should be judged based on whether there is a substantial change in the evidence submitted by the parties and its proof between the two examination applications, before and after. If the new evidence is not sufficient to form new facts and will not have a substantial impact on the examination conclusion of the case, the application will be rejected based on the principle of "Res judicata". (Please refer to the ruling on the invalidation of Trademark No. 18612546 "企信宝(QIXINBAO)" issued on March 13, 2023, as well as the second-instance administrative judgment of Monster Energy Company v. Luo Junhua, et al., case number (2019) Jing Xing Zhong No. 777, Beijing Higher People's Court.)
In addition, the examination standard is also very strict for "evidence that cannot be obtained due to objective grounds or cannot be provided within the prescribed time limit in the original administrative procedure". In judicial practice, not only is the applicant required to submit evidence to prove that the "new evidence material" submitted belongs to evidence that cannot be obtained due to objective grounds or cannot be provided within the prescribed time limit in the original administrative procedure, but further examination will also be conducted to determine whether the so-called new evidence material can form "new facts" sufficient to overturn the original administrative decision. If not, even if the new evidence material belongs to "evidence that cannot be obtained due to objective grounds or cannot be provided within the prescribed time limit in the original administrative procedure", it will be considered as a behavior of re-submitting an examination application based on the same facts and grounds. (Please refer to Final Judgment No. 351 of Beijing High People's Court (2021) in the case of Beijing Yangjiayu Intellectual Property Agency Co., Ltd. and others v. Other Administrative Judgments of the CNIPA; Final Judgment No. 4343 of Beijing High People's Court (2020) Hangzhou Armaten Clothing Co., Ltd. and others v. Air Force General Staff Department.)
In conclusion, for a trademark examination case that has already been concluded with an effective decision, it cannot be automatically recognized as constituting new facts just by submitting evidence that is different from the previous examination case. The new fact should be a fact proven by new evidence, and the new evidence should be evidence that was newly discovered after the original decision or could not be obtained within the prescribed time limit due to objective grounds in the original administrative procedure. If the evidence that could have been submitted in the previous administrative procedure is accepted as new evidence, it would render the limitation on initiating administrative procedures meaningless and go against the legislative intent of “res judicata”.
2. Whether the new citation trademark can form “new facts and grounds”
In practice, when a new citation trademark is proposed in an examination application, trademark examining authorities and courts usually consider it as the applicant presenting "new evidence". (Please refer to the Second Instance Administrative Judgment of Beijing High People's Court (2019) JingXingZhi No. 4598, Case of Connaught Ireland Limited and others versus Trademark Review and Adjudication Board of National General Administration for Industry and Commerce).
However, in practice, there are a large number of series trademark registrations, where although the registration numbers are different, the trademark design or significant identifying parts are the same, and the designated goods or service items are the same. In other words, the new citation trademark will not have a substantial impact on the examination results. In such cases, should they be regarded as "the same facts and grounds"? Can a new examination application be rejected based on the principle of res judicata? There is no consistent practice for this situation in practice.
The author believes that for invalidation requests filed multiple times by the same applicant against the same disputed trademark, even if new citation trademarks are presented in subsequent applications, the differences between the cited trademarks should be examined according to the standard for examining new evidence. If the new citation trademark does not differ significantly from the previous ones and will not have a substantial impact on the examination results, in order to save administrative resources and avoid inconsistent results caused by multiple examinations, it should be considered that "new facts and grounds" have not been formed.
3. Whether a new legal provision constitutes "new grounds"?
According to Article 29 of the Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases Involving Trademark Allowance and Confirmation, if a new legal provision is cited in a new case, it should be considered as "new grounds," even if the facts supporting the new ground are the same as those cited in an earlier application. However, it should be noted that the applicant must have evidence to support the "new grounds," and this evidence may have been submitted in the earlier application. If only new legal provisions are cited without corresponding evidence, the new grounds will not be supported.
Given that applicants always hope to cite legal provisions as comprehensively as possible when submitting examination requests, but under the principle of “res judicata”, we still recommend that applicants carefully select invalidity grounds, especially when filing an invalidation request based on absolute grounds. If it is not supported in the first instance, it is easy to violate the principle of “res judicata” when filing a subsequent application. For cases that already belong to a subsequent examination request, it is necessary to carefully read the contents of the examination ruling or decision, analyze the facts and grounds of the previous examination case, whether the relevant evidence materials have been substantially examined and legally authenticated in the previous case. Only in this way can the risk of rejection due to violation of the principle of “res judicata” be reduced or avoided, and the new examination application can be accepted.
In conclusion, regarding the "res judicata" principle stipulated in Article 62 of the Implementing Regulations of the Trademark Law, the author believes that in practice, the applicant's presentation of "new facts and grounds" is not only about new discoveries but should be combined with evidence to substantiate that there are indeed new facts based on new evidence or new grounds based on the same evidence. This will make it easier for the examining authority to accept them.