PPT模板下载：www.1ppt.com/moban/ 节日PPT模板：www.1ppt.com/jieri/ PPT背景图片：www.1ppt.com/beijing/ 优秀PPT下载：www.1ppt.com/xiazai/ Word教程： www.1ppt.com/word/ 资料下载：www.1ppt.com/ziliao/ 范文下载：www.1ppt.com/fanwen/ 教案下载：www.1ppt.com/jiaoan/

行业PPT模板：www.1ppt.com/hangye/ PPT素材下载：www.1ppt.com/sucai/ PPT图表下载：www.1ppt.com/tubiao/ PPT教程： www.1ppt.com/powerpoint/ Excel教程：www.1ppt.c om/excel/ PPT课件下载：www.1ppt.com/kejian/ 试卷下载：www.1ppt.c om/shiti /

Litigating before the Boards of Appeal of the State Intellectual Property Office of the People’s Republic of China — Chinese Disputes Resolution Procedures for Registered Trademark Professor David Chen, PhD 5 May, 2016 Alicante, Spain

Profile of Professor David Chen, PhD 

Professor of the Law School of Fudan University



Executive Dean of Fudan Shanghai Advanced Institute of Lawyers



Founding Partner of Allbright Law Offices



Vice Director and Mediator of Shanghai Commercial Mediation Center



President of the Intellectual Property Association in China (Shanghai) Pilot Free Trade Zone



Arbitrator of China International Economic and Trade Arbitration Commission



Aarbitrator of International Commercial Chamber

2

CONTENTS 1. The authorities (administrative and judicial) in the disputes resolution procedures and their jurisdictions 2. The disputes resolution procedures before the preliminary examination announcement in Trademark Registration Application 3. The disputes resolution procedures after the preliminary examination announcement in Trademark Registration Application 4. The disputes resolution procedures for declaration of the invalidity of Registered Trademarks 5. Relevant cases sharing

3

1. The authorities (administrative and judicial) in the disputes resolution procedures and their jurisdictions 1-1 The functions of authorities Trademark Office (TO)

Trademark Review & Adjudication Board (TRAB)

Beijing IP Court & Beijing Higher People’s Court

Administration

Administration

Judicial Authority

In charge of the trademark registration and administration throughout the country

Responsible for handling trademark disputes

Chinese judicial system is a four levels and two-instance trial system. The party concerned who dissatisfied with the first trial may appeal to a higher court. The level of Beijing Higher People’s Court is higher than Beijing IP Court. So these two courts responsible to hear the administrative cases and appeals against TRAB

4

1. The authorities (administrative and judicial) in the disputes resolution procedures and their jurisdictions 1-2 Chart of relationship among authorities “four levels and two-instance trial system”

Supreme Court State Administration for Industry & Commerce of China (SAIC) Beijing Higher People’s Court Establish

Establish Judge reviews decisions made by TRAB

TO

TRAB

Appeal to a higher court

Beijing IP Court (equivalent to intermediate court)

Review the decisions made by TO

Appeal court concludes cases within 3 months may be extended by the approval of the president of court The first trial shall be concluded within 6 months under ordinary procedure, a 6 months extension may be allowed by the approval of the president of court; if in summary procedure shall be concluded within 3 months

Basic Courts 5

2. The disputes resolution procedures before the preliminary examination announcement in Trademark Registration Application 2-1 The TO examines trademark registration applications within 9 months, and decides whether shall issue a preliminary examination announcement. Trademark Office (TO)

Trademark Review & Adjudication Board (TRAB)

If the applicant objects TO’s decision of dismissing a trademark registration application or not making a preliminary examination announcement, may apply for TRAB review within 15 days upon receipt of TO’s notice.

TRAB shall make a decision within 9 months which may be extended for 3 months approved by SAIC. The party who objects decision, may bring a lawsuit to Beijing IP court within 30 days upon receipt of TRAB’s notice.

Beijing IP Court

Responsible to hear the cases against TRAB and make the judgment. If the party objects to the judgment, the party may appeal to Beijing Higher People’s Court within 15 days upon receipt of the copy of judgment.

6

2. The disputes resolution procedures before the preliminary examination announcement in Trademark Registration Application 2-2 The chart of disputes resolution procedures before the preliminary examination announcement in Trademark Registration Application TO examines the application form within 9 months

Application to TO for Registering Trademark Apply TRAB review within 15 days

Meet the requirements by law?

No

Application Rejected

Yes Yes Yes Preliminary announcement issued/available for 3 months; If no objections, final examination announcement will be issued

Preliminary Examination Announcement

No

Apply to TRAB review?

Rejection to Trademark Registration Application

TRAB make decision within 9 months

Favorable TRAB review result? No

END

Beijing Higher People’s Court Bring to Beijing IP court within 30 days

Beijing IP Court

Appeal within 15 days

7

3. The disputes resolution procedures after the preliminary examination announcement in Trademark Registration Application 3-1 The following concerned parties may, within 3 months from the date of the preliminary examination announcement of a trademark, raise objections to TO, which may bring an objection litigation in trademark registration application Opposing Parties

Trademark Office (TO)

(1) The holder of prior rights or an interested party thinks that the trademark is in violation of Clause 2-3 of Article 13, Article 15, Clause 1 of Article 16, Article 30-32 of Trademark Law.

TO shall hear to the facts and grounds submitted by the opposing party and the opposed party, make a decision on whether to approve the registration of the trademark within 12 months upon expiry of the announcement period, may be extended for 6 months approved by SAIC.

(2) Any party thinks that the trademark is in violation of Article 10, 11& 12 of Trademark Law

8

3. The disputes resolution procedures after the preliminary examination announcement in Trademark Registration Application 3-2 The following concerned parties may request TRAB to bring a review decision, after TO makes a decision whether to approve the registration of the trademark. Trademark Applicant (Opposed Party) (1) The opposed party who objects the decision made by TO not to register the trademark, may apply for review to TRAB within 15 days when receiving the decision. The review period is within 12 months which may be extended for 6 months approved by SAIC.

Opposing Parties

Where TO decides to approve registration of trademark, it shall issue the registration certificate and make an announcement. The opposing party, if still having objections, may request TRAB to declare the registered trademark invalid.

(2) The opposed who has objections to the decision by TRAB may bring a lawsuit to Beijing IP Court within 30 days upon receipt of review decision notice.

9

3. The disputes resolution procedures after the preliminary examination announcement in Trademark Registration Application 3-3 The chart of disputes resolution procedures after the preliminary examination announcement in Trademark Registration Application Issued by TO, preliminary announcement available for 3 months

TO grants registered trademark

Preliminary Examination Announcement

Trademark Registration Announcement

Any objections? If Yes, enter TO objections review

Decisions: Maintain TRAB’s decision: reject to register trademark;

No

Favourable judgement result: TRAB makes a new review

Yes

TO make decision within 12 months

Beijing Higher People’s Court

No

Rejected by TO during objections review?

Yes

Yes Opposed Party apply to TRAB review? Apply TRAB review within 15 days

END

No

Yes

TRAB make decision within 9 months

Rejection to Trademark Registration Application

Favorable TRAB Review Result?

Appeal within 15 days

No

Beijing IP Court

Upon receipt of the decision, if dissatisfied, bring to Beijing IP court within 30 days

10

4. The disputes resolution procedures for declaration of the invalidity of Registered Trademarks 4-1 A registered trademark shall be declared invalid by TO if it is in violation of Article 10, 11 &12 of Trademark Law, or its registration is obtained by deceptive or other improper means. Other entities or individuals may request TRAB to declare such registered trademark invalid. Invalidation declared by TO

Other entities or individuals

(1) If the trademark holder objects TO’s decision, may apply for review to TRAB. TRAB shall make a decision and notify within 9 months upon receipt of the application, which may extended for 3 months approved by SAIC.

(1) TRAB shall notify the party concerned in writing, and require to issue a reply within the prescribed period. TRAB shall render a ruling on maintaining the registered trademark or declaring the registered trademark invalid within 9 months which may extended for 3 months approved by SAIC.

(2) The holder who objects TRAB’s decision may bring a lawsuit to Beijing IP Court within 30 days upon receipt of TRAB’s notice and appeal to Beijing Higher People’s Court if dissatisfied with the first trial within 15 days.

(2) If the party concerned objects the ruling, may bring a lawsuit to Beijing IP Court within 30 days upon receipt of TRAB’s notice and appeal to Beijing Higher People’s Court if dissatisfied with the first trial within 15 days.

11

4. The disputes resolution procedures for declaration of the invalidity of Registered Trademarks 4-2 Where a registered trademark is in violation of Clause 2 and 3 of Article 13, Article 15, Clause 1 of Article 16, Article 30-32 of Trademark Law, the holder of prior rights or an interested party may request TRAB to declare the registered trademark invalid within 5 years upon the registration of the trademark.

TRAB shall, upon receipt of an application for declaring the registered trademark invalid, notify the party concerned, and require the parties to issue a reply within the prescribed period. TRAB shall maintain the registered trademark or declare the registered trademark invalid within 12 months which may be extended to an additional 6 months approved by SAIC. If the party objects TRAB’s decision, may bring a lawsuit to Beijing IP Court within 30 days upon receipt of TRAB’s notice and appeal to Beijing Higher People’s Court if dissatisfied with the first trial within 15 days.

12

4. The disputes resolution procedures for declaration of the invalidity of Registered Trademarks 4-3 The chart of the disputes resolution procedures for Declaration of the Invalidity of Registered Trademarks The prior rights holder and other persons request TRAB to declare the registered trademark invalid Timing: within 5 years upon the registration of trademark

TRAB complete review within 12 months

Trademark Registration Announcement

TO Investigation Decide to Invalidate Registered Trademark

TRAB Request the Parties to Make Reply

Registered Trademark Review

Maintain Registered Trademark

No

Invalidate the Registered Trademark?

Yes

Beijing Higher People’s Court

Invalidation of Registered Trademark Confirmed

No

Dissatisfied with the review decision?

Appeal within 15 days

Yes Upon receipt of the decision, if dissatisfied, bring to Beijing IP court within 30 days

Beijing IP Court

13

5. Relevant cases sharing - PUMA 5-1 The failure of extension protection of PUMA’s “WINDCELL” trademark TO

PUMA applied a territorial extension protection of its trademark “WINDCELL” to TO in China for registering the trademark in the 25th category. TO, in August 2012, made a decision to REJECT the application.

TRAB

PUMA applied a review to TRAB, but its proposition was not supported by TRAB, then its territorial extension protection was REJECTED again. The reason was that there are several registered trademark similar with “WINDCELL” which not only are all registered in 25th category (clothes, shoes ,etc.) such as “WIND”, “wind” and “cell”, but their application dates were all ahead of the application of “WINDCELL”.

Court

PUMA had objections to the decision made by TRAB, then brought an administrative lawsuit against TRAB to Beijing’s First Intermediate People’s Court (the IP court has not yet been established). In this case, PUMA presented that “WINDCELL” did not constitute similarity with the other registered trademarks. Also the products with “WINDCELL” had been heavily sold which might not cause confusion to costumers between “WINDCELL” and the other trademarks. The court considered that the trademarks were used in the same product category which made them the similar trademarks in the same or similar product category. Therefore, the court maintained the decision of TRAB.

The Court maintained the decision of TRAB – Rejection of territorial extension protection

14

5. Relevant cases sharing – Land Rover 5-2 Land Rover applied to declare Geely’s “陆虎”(“LUHU”) registered trademark invalid 5-2-1 The involved parties and trademark

陆虎 (Involved trademark)

versus

Holder to the Trademark

Requester to the Invalidation

陆虎, pronounced “LUHU” in Chinese is translated from Land Rover

15

5. Relevant cases sharing – Land Rover 5-2-2 Details to Land Rover versus Geely’s “陆虎”(“LUHU”) registered trademark invalid TO

TRAB

Court

In 2001, Geely was granted to register trademark “陆虎” by TO, which was used in 12th category including motorcycle, car and etc.

In 2004, Land Rover requested TRAB to declare trademark “陆虎” invalid, and provided Chinese media reports to prove before 1999 “陆虎” was referred to Land Rover, and Land Rover and its automobiles were highly recognized by Chinese customers. But TRAB considered that Land Rover failed to prove its use and publicity of “陆虎”before Geely’s registration of “陆虎” , so Geely did not violate Trademark Law. TRAB decided to maintain Geely’s registration trademark. Land Rover objected and sued to Beijing’s First Intermediate People’s Court (the IP court has not yet been established).

Court thought that before registration of “陆虎”, the representative of Land Rover had recognized “陆虎” was referred to Land Rover and its car brand in media . And “陆虎” had broad influence in Chinese market, Geely as a car manufacture should know the popularity of Land Rover and correspondence between Land Rover and “陆虎”. Geely registered “陆虎” clearly lack of legitimacy which violated article 31 of 2001 Trademark Law. Therefore, Court revoked TRAB’s decision. Geely and TRAB dissatisfied and appealed to Beijing Higher People’s Court , but the appeal was rejected.

The Court revoked the decision of TRAB and granted invalidation of Geely’s “陆虎”(“LUHU”) registered trademark

16

Professor David Chen, PhD E-mail: [email protected] Mobile: +86-1380-1934-356

Thank You!

APPENDIX Article 13 Clause 2-3 In the event of an application for registration of a trademark that is a reproduction, imitation, or translation of another's well-known trademark not registered in China on same or similar goods, and consequentially is likely to create confusion, the application shall be rejected and the trademark shall be prohibited from use.

In the event of an application for registration of a trademark that is a reproduction, imitation, or translation of another's well-known trademark registered in China on different or dissimilar goods, and consequentially is likely to create confusion and cause damage to the interests of the registrant for the well-known trademark, the application

shall be rejected and the trademark shall be prohibited from use.

Back to Related Page

Article 15 Where an agent or representative registers, in its own name, a trademark of one of its principals without authorization, and the principal opposes the registration, the trademark shall not be registered and shall be prohibited from use.

An application for registering a trademark on the same or similar goods shall not be approved if: the trademark under application is identical with or similar to an unregistered trademark already used by another party; the applicant clearly knows the existence of the trademark of such another party due to contractual, business or other relationships with the latter other than those prescribed in the preceding Paragraph; and such another party raises objections to the applicant's trademark registration application. Article 16 Where a trademark contains a geographical indication of goods and the goods are not from the region indicated

therein, thus misleading the public, the trademark shall not be registered and shall be prohibited from use. However, those having been registered in a bona fide manner shall remain valid. Back to Related Page

Article 30 If a trademark for which a registration application is filed fails to comply with the relevant provisions of this Law or is identical or similar to another's trademark that has been registered or preliminarily approved for use on the same or similar goods, the Trademark Office shall reject the application, and no publication shall be made.

Article 31

If two or more applicants apply for registration of the same trademark or a similar trademark for use on the same or similar goods, the trademark application that is filed first shall be preliminarily approved, accompanied by a publication thereon. If the applications are filed on the same day, the trademark that is used first shall be preliminarily approved, accompanied by a publication thereon, and the application(s) of the other applicant(s) shall be rejected and no publication shall be made.

Article 32 An application for trademark registration shall not prejudice any pre-existing right of others. It is prohibited to forestall the registration, through any improper means, of a trademark that is already used by another party and has produced a certain influence.

Back to Related Page

Article 10 The following signs shall not be used as trademarks:

(1) Those identical with or similar to the State name, national flag, national emblem, national anthem, military flag, army emblem, army songs or medals of the People's Republic of China; and those identical with the names or emblems of Central State organs, the names of the specific locations that are the domiciles of the Central State organs, or the names or designs of landmark buildings; (2) Those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries, except with the consent of the governments of the countries involved; (3) Those identical with or similar to the names, flags or emblems of international inter-governmental organizations, except with the consent of the organizations concerned or except where the likelihood of misleading the public is slim; (4) Those identical or similar to official signs or hallmarks indicating control or warranty, except as otherwise authorized;

(5) Those identical or similar to the name or sign or mark representing "Red Cross" or "Red Crescent"; (6) Those with a nature of national discrimination; (7) Those that are deceptive and are likely to cause public confusion in terms of the quality, other characteristics or place of production of relevant goods;

(8) Those detrimental to socialist morality and custom or having other ill effects. Names of administrative divisions at or above the county level and foreign place names that are known to the public shall not be used as trademarks, unless any such name has other meanings or is an integral part of a collective or certification mark. If a trademark containing a place name has already been registered, the trademark shall remain valid. Back to Related Page

Article 11 The following signs shall not be registered as trademarks: (1) Those consisting only of generic names, devices, or model numbers of the goods concerned;

(2) Those consisting only of a direct representation of the quality, primary raw materials, functions, intended purposes, weight, quantity, or other characteristics of the goods concerned; (3) Those otherwise lacking distinctive features. The signs mentioned in the preceding paragraph may be registered as trademarks after they have acquired distinctiveness and become easily distinguishable through use.

Article 12 With respect to a three-dimensional mark as the subject matter under a trademark registration application, registration of that mark shall be prohibited if its shape only represents the nature of the product, or its shape is required for achieving a technological result, or its shape adds substantial value to the product.

Back to Related Page

Article 31 of 2001 Trademark Law An application for trademark registration shall not prejudice any pre-existing right of others. It is prohibited to forestall the registration, through any improper means, of a trademark that is already used by another party and has produced a certain influence.

Back to Related Page