According to a translation provided by Rouse & Co International, the new explanation is called Provisions of the Supreme People’s Court on issues concerned in the trial of cases of civil disputes over the conflict between a registered trade mark or enterprise name with prior right. It came into force on Friday March 1.

The explanation contains four articles. Article 1 states:

“For a lawsuit filed on the ground that the character or graphic used in the registered trademark of other party infringes upon the plaintiff’s copyright, patent right for a design, right to enterprise name or other prior right, if the lawsuit conforms to the provision of Article 108 of the Civil Procedure Law, the people’s court shall accept it.”

“This is a positive clarification,” said August Zhang, a partner of Rouse & Co in Beijing. Zhang believes that in certain cases the new rules could help IP owners avoid having to go to the Trade Mark Review and Adjudication Board (TRAB) before launching a civil court action.

According to this new explanation, if a plaintiff’s prior art is a copyright, design patent or trade name then they can take the owner of an infringing registered trade mark to court directly. But if the plaintiff complains that his registered trade mark is being infringed, he still needs to file a cancellation action at TRAB.

Delays at TRAB, which deals with appeals against a refused registration, appeals against opposition decisions made by the Chinese Trade Mark Office and cancellation actions, can stretch up to seven years, according to lawyers in China.

Managing IP wrote an article about the affect of delays at the China Trademark Office and TRAB in March last year. Subscribers can read it here.