On April 21 2010, the Supreme People's Court issued the Opinion on Several Issues Regarding Administrative Adjudication of Trade Mark Grant and Confirmation. The Opinion is based on the experience of the court in administrative actions brought against the TRAB in trade mark application, opposition or invalidation cases.
The Opinion has laid down certain general guidelines. For example, widespread use of a trade mark is a factor in favour of granting or maintaining its exclusive rights, and vice versa. This is because the value of a trade mark relies on use thereof. Regarding trade mark distinctiveness, the test is its overall distinctiveness, judged by relevant consumers based on their common understanding of it. Thus any descriptive element which does not affect its overall distinctiveness will not render a mark indistinctive, nor is a descriptive sign necessarily devoid of distinctive character if it is presented in an unusual manner such that it is distinguishable as to source. Accordingly, taking a foreign language mark as an example, the general understanding of its meaning by the Chinese consumer concerned is relevant.
A trade mark may be refused registration on a number of absolute or relative grounds. The meaning of some of them has been exemplified by the Opinion, including the following.
A mark will be refused registration if it is detrimental to socialist morals or has undesirable social impact. According to the Opinion, undesirable social impact is restricted to negative impact politically, economically, culturally, religiously or ethnically, or on other public interest grounds. It is an absolute, rather than a relative ground of refusal for registration.
A mark will be refused registration if its application is made by the agent or representative of the rights owner without his authorisation. Acknowledging that this includes the trade mark agent and sale agent of the rights owner, the Opinion further confirms that this can have a broader meaning, covering the situation where the applicant was not yet the agent/representative of the rights owner at the time of his pre-emptive trade mark application because they were only in business talks and that this agent/representative relationship only came into being afterwards. This term should also include an applicant who colludes with the agent/representative.
A mark is refused registration if it concerns use of improper means to pre-emptively register the mark of a third party that has gained a certain level of influence in China. According to the Opinion, this is satisfied if the mark of the third party has been consistently in use: in respect of goods which are the same as or similar to those applied for by the applicant; for a certain period of time; within a certain geographical scope; and involving a certain amount of sales or promotion. As a result, the mark is known to a certain range of the relevant consumer public, suggesting that the applicant actually knew or ought to have known that the trade mark has been in use by the third party.
A registered mark will be invalidated if its registration falls within any one of the absolute grounds for refusal, or has been acquired by means of fraud or by other improper means. The Opinion explains that the other improper means provision is a catch-all provision for refusing registration of marks based on absolute grounds, applicable where registration may disrupt the stable trade mark registration system, harm public interest, abuse public resources or give rise to unjust benefit.
Most of the views expressed in the Opinion are not entirely new. The Trade Mark Examination Standards and the Trade Mark Adjudication Standards issued in 2005 by the Chinese Trade Mark Office and Trade Mark Review & Adjudication Board contain similar guidelines. However, a guideline like the Opinion coming from the court as the final arbiter of trade mark disputes is most welcome.
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| Howard Tsang |
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