To the Higher People’s Courts of all provinces, autonomous regions and municipalities, the Military Court of the People’s Liberation Army, and the Branch Court of the Higher People’s Court of the Production and Construction Corps in Xinjiang Uygur Autonomous Region,

The Opinions of the Supreme People’s Court on Several Issues Concerning Trials of Administrative Cases on Granting and Affirming Trademark Right is hereby printed and distributed for your firm implementation.

                                                                                                                     April 20, 2010

Since The Decision of the Standing Committee of the National People's Congress on Amending the Trademark Law of the People's Republic of China entered into force on December 1, 2001, the people’s courts have begun to lawfully accept and hear the administrative cases concerning specific administrative acts, such as trademark review decision, review decision on trademark opposition, dispute decision and review decision on cancellation with regard to granting and affirming trademark right made by the TRAB and initiated by the interested persons. The people’s courts have also carefully studied the issues concerning the application of related laws and accumulated rich trial experience. In order to improve trials of administrative cases on granting and affirming trademark right and summarize trial experience as well as clarify and unify trial standards, the Supreme People’s Court held many thematic meetings, conducted thematic research and heard opinions from relevant courts, departments, professionals and research
ers before studying and summarizing issues concerning the application of the law in trials of administrative cases on granting and affirming trademark right. On this basis, in accordance with The Trademark Law of the People's Republic of China and The Administrative Procedure Law of the People's Republic of China and according to the judicial practice, the Supreme People's Court provides the following opinions on trials of such cases.

1. When hearing administrative cases on granting and affirming trademark right, the people’s courts may apply the standard of granting and affirming trademark right in a strict way appropriately, give full consideration to the interests of consumers and dealers in the same industry, effectively restrain the unjustified rush-registrations, to attach importance to the protection to the commercial signs, such as prior trademarks of comparatively high popularity and distinctiveness and trade names, and try best to eliminate the possibility of confusion among the commercial signs with regard to an involved trademark that has not been in use for a long time yet. With regard to an involved trademark that has established comparatively high reputation in the market and among relevant public, they shall grasp the legislative spirit of The Trademark Law for seeking a balance between protection to prior rights of commercial signs and maintenance of the market order, and fully recognize the fact that certain public groups 
have objectively distinguished certain commercial signs from each other, while maintaining the established stable market order.

2. In practice, some signs or some of the composing elements are exaggerated to some extent, but they are not sufficiently to make the relevant public misunderstand from life experience or common knowledge. In this case, it is inadvisable to regard them as signs having the nature of exaggeration and fraud in advertising goods by the people’s courts.

3. When hearing and determining whether a certain sign has other bad impacts, the people’s court shall consider whether this sign or its elements have negative impacts on public interests and public order in the aspects of politics, economy, culture, religion, nationality or the like. If the registration of this sign only harms particular civil right, it is inadvisable to be regarded as having other bad impacts  since there are remedies and corresponding procedures prescribed in The Trademark Law already. 

4. In accordance with The Trademark Law, the geographical names of the administrative divisions at or above the county level and the foreign geographical names well-known to the public shall not be registered and used as trademarks. In practice, some trademarks are constituted by a geographic name and other elements. In this case, if the trademark as a whole is distinctive due to the presence of other elements and no longer has the meaning of the geographic name or does not use the geographic name as its main meaning, it shall not be regarded as a trademark excluded from registration though it includes a geographical name of the administrative division at or above the county level or a foreign geographical name well-known to the public.

5. When hearing administrative cases on granting and affirming trademark right, the people’s courts shall determine whether the trademark as a whole is of distinctiveness based on common knowledge of the relevant public who use the  goods designated by the involved mark. Where the descriptive element in a sign does not affect the distinctiveness of a trademark as a whole or the descriptive sign is represented in a unique way that makes the relevant public distinguish the source of the goods, it shall be recognized as distinctive.

6. When hearing administrative cases on granting and affirming trademark right, the people’s court shall determine whether an involved trademark in a foreign language is of distinctiveness based on common knowledge of the relevant public in China. Where an involved sign contains foreign words with a fixed meaning but the relevant public can distinguish the source of the goods, this will not affect determination of whether the sign is of distinctiveness.

7. When determining whether an involved trademark is a generic name, the people’s courts shall examine whether it is a legal or conventional goods name. Where an involved trademark is a common goods name judging from laws or national and industry standards, it shall be deemed as a generic name. If the relevant public believe that a certain name can represent one kind of goods, this name shall be deemed as a conventional generic name. The goods names listed in professional reference books and dictionaries may be used as a reference for determining whether a name is generic.

Determination of conventional generic names usually depends on common knowledge of the relevant public nation wide. As for a goods name formed due to historical traditions, local customs, geographic environment or the like in relevant market, the name commonly used in the market may be considered as generic.

Where the applicant knows or is supposed to know that the trademark, for which an application for registration is filed, is a generic name in a certain region, this trademark shall be deemed as generic.

8. The people’s courts should base on the fact at the time of filing the trademark registration application in determining whether an involved trademark is a generic name. If the involved trademark was not a generic name at the time of filing but became so when the registration is to be approved, it shall be deemed as a generic name of the goods; if the involved trademark was a generic name of the goods at the time of filing but was then no longer a generic name when the registration is to be approved, its registration will not be affected.

9. If a sign merely or mainly describes and explains such characteristics of a commodity as quality, main raw material, functions, use, weight, quantity and place of origin, it shall not be regarded as distinctive. If the sign or its element that implies characteristics of the commodity but it does not affect to distinguish the source, it does not belong to the above circumstance.

10. When hearing administrative cases on granting and affirming trademark right of well-known trademarks, the people’s courts may refer to relevant provisions such as Article 5, Article 9 and Article 10 of The Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of the Law in Trials of Civil Disputes over Well-known Trademark Protection.

11. With regard to well-known trademarks that have been registered in China, the people’s courts should pay attention to accord with its popularity in determining the protection scope of the mark in dissimilar goods. With regard to the registered trademarks well-known to the relevant public in China, when determining its protection scope in dissimilar goods, the people’s court should give it a comparatively broad protection corresponding to its popularity.

12. Where the trademark agent or representative, or the agent or representative in sense of distribution registers a trademark in its own name without authorization, the people’s court shall regard this act as a rush registration of the trademark of the entrustor or representee by the agent or representative. In judicial practice, some rush registrations take place when the entrustment or representative relationship is still under negotiation, namely, the rush registration is earlier than the establishment of the entrustment or representative relationship, and this act shall be deemed as a rush registration by the agent or representative. If the applicant for trademark registration colludes and conspires with the agent or representative in the rush registration, the applicant shall be regarded as the agent or representative. The act of collusion and conspiracy in the rush registration may be presumed according to the special identity relationship between the applicant for trademark registration and the agent or representative.

13. The agent or representative shall not apply for registration of the commercial signs that are identical with or similar to the trademark of the entrustor or representee; goods excluded from registration include the goods that are identical with or similar to the designated goods of the trademark of the entrustor or representee.

14. When determining similar goods or trademarks in trials of administrative cases on granting and affirming trademark right, the people’s courts may refer to relevant provisions in The Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of the Law in Trials of Civil Disputes over Trademarks.

15. When determining whether the relevant goods or services are similar, the people’s courts shall consider the following aspects: whether the functions, the usage, the production departments, the marketing channels, the consumers or the like of the goods are the same or greatly related; whether the purposes, the contents, the forms, the objects or the like of the services are the same or greatly related; whether the goods are greatly related to the services and whether the relevance is easy to make the relevant pubic consider that the goods and services are provided by the same entity or by entities in a particular relationship. International Classification of Goods and Services for the Purposes of the Registration of Marks and List of Goods and Services can serve as references for determining similar goods or services.

16. To determine similar trademarks, the people’s courts shall not only consider the similarity between the composing elements and overall appearance of the signs but also the distinctiveness and popularity of the trademarks, the relevance of the goods based on whether it is easy to cause confusion.

17. The general provision in Article 31 of the Trademark Law, i.e. “the application for trademark registration shall not harm the existing prior rights of others”, shall be correctly understood and applied. When determining whether an involved trademark harms the existing prior rights of others, with regard to those have been specially prescribed in Trademark Law, the people’s courts shall protect the prior rights according to the law. Though there is no provision in Trademark Law, if those should be protected according to The General Provisions of the Civil Law and other laws, they should be protected according to these laws.

When determining whether an involved trademark harms the existing prior rights of others, the people’s courts should based on the filing date of the involved trademark usually. If the prior rights exist no longer when the registration of the involved trademark is approved, the registration of the involved trademark will not be affected.

18. In accordance with The Trademark Law, the applicant shall not rush register the trademark used by others and having certain influence through unjustified means. If the applicant knowingly rush registers or is supposed knowingly rush registries the trademark used by others and has certain influence, it may be deemed that the applicant uses unjustified means.

Where a trademark is used in practice in China and is known to the relevant public in an area, it should be deemed as the trademark being used and having certain influence. If there is evidence to prove that the prior trademark has been continuously used for a certain time in a certain region and has a certain sales amount or advertisement, the prior trademark may be deemed as having certain influence.

With regard to the trademarks which have been used and have certain influence, it is inadvisable to be protected in dissimilar goods.

19. When hearing administrative cases concerning cancellation of registered trademarks and determining whether an involved trademark is registered through unjustifiable means, the people’s courts should consider whether this means belongs to the means that disorders trademark registration, harms public interests, occupies public resources in an unjustified way or seeks illegal profits in other ways except the deceptive means. With regard to those only harm a specific civil right, the people’s court should apply the Article 41(2) and 41(3) and other relevant provisions in The Trademark Law.

20. When hearing trials of administrative cases on cancellation of a registered trademark which has not been in use for three consecutive years, the people’s courts shall correctly determine whether the concerned act constitutes actual use of the mark in accordance with the legislative spirit of The Trademark Law.

The use of the mark by the trademark owner, or through license and other means which are not against the owner’s will can be deemed as actual use. If a trademark has been used slightly different from the registered specimen, but the distinctive features have not been changed, it may be regarded as use of the registered trademark. Without actual use of the registered trademark, the mere assignment or license, or the mere publication of trademark registration information or the mere announcement of exclusive ownership of the registered trademark are inadvisable to be deemed as use of the trademark.

Where the trademark owner fails to actually use or stops to use the registered trademark due to objective factors such as force majeure, policy restrictions and bankruptcy liquidation, or the trademark owner has a real intention to use the trademark and makes necessary preparations for using the mark but has not yet used the registered trademark due to other objective factors, it shall be deemed that the trademark owner has justified reasons.