Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases (2019)

Part I Relevant Procedural Issues

1. Determination of subject eligibility

1.1 Scope of prior rights holders

The trademark owner and other legitimate prior rights owners under the protection of law shall be the “prior rights holders” as provided in Articles 33 and 45.1 of the Trademark Law.

1.2 Scope of interested parties

The licensees of prior rights, the lawful successors of prior rights, or the controlling shareholders of the prior rights holders shall be the “interested parties” as provided in Articles 33 and 45.1 of the Trademark Law. If a broker submits a special authorization document issued by a model, actor and so forth for relevant personal rights, he/she shall be deemed to be an “interested party”. A subject that is affected by the application of registration of a trademark in dispute but does not have a direct interest in the prior rights shall not be considered an “interested party”.

1.3 Time of determination of interested parties

The determination of interested parties shall be generally based on the time of application for trademark opposition or invalidation. If interested parties changed after the court of first instance accepts an administrative case, the litigation subject status of original interested parties shall not be affected in general, but the current interested parties may be notified to participate in the administrative lawsuit based on their application. If interested parties changed after the court of first instance delivered a judgment, the court of second instance may notify them to participate in the administrative lawsuit in the capacity of third parties based on current interested parties’ application.

1.4 Effect of transfer of a reference trademark on the litigation status of the parties

If a reference trademark has been approved for transfer in a first-instance administrative lawsuit, a transferee may be notified to participate in the lawsuit according to the transferee’s application, which shall not affect the transferor to continue to participate in the lawsuit; in the event that the transferor explicitly waives the continued participation in the lawsuit, the transferee may substitute the litigation status of the transferor, and the litigation actions completed by the transferor are binding on the transferee. If a reference trademark has been approved for transfer in the second-instance administrative lawsuit, a transferee may be notified to participate in the lawsuit according to the transferee’s application, which shall not affect the transferor to continue to participate in the lawsuit.

1.5 Legal consequences of not notifying the transferee of the trademark in dispute to participate in the review

If, in the trademark review process, a trademark in dispute has been transferred, the trademark review and adjudication department of National Intellectual Property Administration,PRC (hereinafter referred to as “TRAD”) does not notify the transferee to participate in the review process and directly makes an administrative ruling against the transferee, and the transferee is able to prove that the reasons and conclusions of the administrative ruling in question are illegal, then the transferee’s claim on revocation of the disputed administrative ruling may be supported; however, if the transferee is unable to prove that the reasons and conclusions of the disputed administrative ruling are illegal in the lawsuit, then the transferee’s claim on revocation of the disputed administrative ruling may not be supported.

1.6 Effect of the trademark in dispute transfer on the litigation status of the parties

If, in the trademark review process, the trademark in dispute has been transferred and the transferee participates in the forthcoming review process, the transferor shall generally no longer be an administrative counterpart. In the event that the transferor files an administrative lawsuit, such lawsuit may berejected. The litigation actions completed by the transferor are binding on the transferee.

1.7 Scope of adding litigants

In an administrative case of review of rejected trademark application, generally, litigants shall be limited to the counterparties of the administrative act in question and other persons that are interested in the administrative act, it is inappropriate to proactively add the subjects that have not participated in the trademark review process such as the owner of the reference trademark.

1.8 Opposition causes and determination of subject eligibility

In the event that the opponent also alleges that the trademark in dispute violates the provisions of Articles 10, 11, 12, 13.2, 13.3, 15, 16.1, 30, 31 and 32, whether such opponent is eligible to file the application according to Articles 13.2, 13.3, 15, 16.1, 30, 31 and 32 shall be examined. If the opponent is not a “prior right holder” or an “interested party” under Article 33 of the Trademark Law, the application causes other than those provided in Articles 10, 11 and 12 shall be examined.

1.9 Determination of subject eligibility of foreign parties

The determination of subject eligibility of foreign parties shall be governed by the provisions of Article 14 of the Law on the Application of Laws of Foreign-related Civil Relations. If a party claims that the subject eligibility of the counterparty no longer exists according to the laws of another country or region, it shall provide evidence of the elimination of registration of such subject eligibility as well as the legal provisions on the elimination of registration of such subject eligibility in such country or region. If the subject eligibility may be reinstated after being removed from the register based on the laws of another country or region, the party may be given an opportunity to correct and explain the status of the existence of the subject. In the event that the party is delinquent in proving, such party shall bear the corresponding legal consequences.

2. Scope of review

2.1 Legal consequences of omitting review reasons

The scope of trademark review is generally limited to the reasons and the corresponding legal provisions explicitly set out in the application and supplementary reasons by the applicant. If the facts and reasons for the defense of the respondent are directly related to the aforesaid application items, they can be reviewed conjunctly except for those exceeding the time limit specified by the Trademark Law. If TRAD fails to review under the foregoing circumstances accordingly, which poses a real impact on the party’s rights, the party’s claim that the above violates the legal procedures may be supported. In the trademark review process, if the facts and reasons for defense, subsequent cross-examination opinions and so forth of the applicant or the respondent are obviously beyond the scope of application, or the applicant simply lists the legal provisions in the application and supplementary reasons without stating relevant facts and reasons throughout the text, the party’s claim that TRAD omits reasons for the review shall not be supported.

2.2 Selecting application of Articles 13 and 30

If a party makes an application based on Article 13 or both of Articles 13 and 30 of the Trademark Law, and TRAD fails to review according to Article 13 of the Trademark Law and does not support the application of the party, then TRAD constitutes omission of reasons for review; if the circumstance above poses a real impact on the party’s rights, the party’s claim that TRAD violates the legal procedure may be supported.

2.3 Legal consequences of review beyond the scope

If a party has evidence to prove that the content of the disputed ruling is beyond the scope of refusal of the application for trademark registration, the non-registration decision, the decision to revoke or maintain the registered trademark, and the review application and defense of the party and there is no legal basis, the party’s claim that the content exceeds the scope may be supported.

2.4 Supplementing review evidence

In the trademark review process, if a party states that it needs to supplement the evidence based on Article 59 of the Implementing Measures of the Trademark Law, and TRAD directly makes the disputed ruling by the time limit prescribed by law, the party’s claim that the above violates the legal procedure may be supported.

2.5 Scope of review of rejected trademark application

In an administrative case of review of rejected trademark application, if TRAD directly makes the disputed ruling based on Article 10, 11, 12 or 16.1 of the Trademark Law beyond the decision of rejection of trademark registration application without hearing the applicant’s opinions, the party’s claim that the above violates the legal procedure may be supported.

2.6 Scope of review for unapproved trademark registration

In an administrative case of review of unapproved trademark registration, if the content of the disputed ruling exceeds the scope of goods or services that are not approved for registration, the party’s claim that the above violates the legal procedure may be supported. TRAD’s examination of unapproved registration review shall generally be determined by the scope of review of non-registration decision, the claim of the applicant for review, and the reasons claimed by the original opponent in the review and applied during the review process.

2.7 Scope of review of invalidation of trademark rights

In an administrative case of the request for invalidation of trademark rights, TRAD shall generally examine the facts, reasons and requests in the application and defense of the parties. If TRAD reviews beyond the foregoing scope, the party’s claim that the above violates the legal procedure may be supported.

2.8 Determination of the review scope in trademark administrative litigation

In trademark administrative litigation, the scope of review shall generally be determined based on the plaintiff’s claims and reasons. If the plaintiff fails to claim and yet the disputed ruling is obviously inappropriate, a ruling shall be made on relevant issues after each party states opinions and shall not exceed the review scope of the disputed ruling. If a party has claimed a number of reasons in the trademark review process, and TRAD only makes the disputed ruling based on part of the reasons and the conclusion is erroneous, the party’s claim to revoke the disputed ruling may be supported and the reasons that are not examined by TRAD shall not be supported directly.

2.9 Simultaneous application of “absolute reasons” and “relative reasons” 

If TRAD makes a ruling to reject the disputed application for trademark registration based on provisions of Articles 10, 11, 12, 30 and 31 of the Trademark Law, the disputed ruling shall not be revoked simply because TRAD applies provisions of Articles 10, 11, 12, 30 and 31 of the Trademark Law simultaneously in its review.

3. Service

3.1 Determination of service address

If a party confirms the service address during the trademark review procedure and agrees to apply the same in the trademark administrative proceeding, it may be served at that address.

3.2 Electronic service

In the case of delivery by fax or e-mail, fax numbers for sending and receiving faxes, e-mail addresses for sending and receiving e-mails, time of sending, and the name of the litigation documents for delivery shall be recorded, and the confirmation forms of fax delivery and the web page indicating successful delivery of e-mails shall be printed for filing and future reference. In the case of delivery by text, Wechat or otherwise, the number of the mobile phone of receiving and sending, time of sending, and the name of the litigation documents for delivery shall be recorded, the delivered content by text, Wechat or otherwise shall be photographed for filing and future reference.

3.3 Determination standards of service

The party’s receipt of the notice for acceptance, proof, defense and evidence exchange, evidence and other materials relevant to the case in the trademark review case posted during the trademark review procedure shall be deemed to be proper service.

3.4 Burden of proof for service

If a party claims that the service procedure is illegal on the grounds that it has not received the relevant materials of the case in trademark administrative litigation, TRAD shall provide evidence proving that the party receives relevant materials and the mailing list printed by the postal department in batches may serve as prima facie evidence. The materials of internal processes such as list of issues, as well as the documents evidencing collection by a property company or a doorman on behalf without authorization of the party, do not suffice to prove that the party has received the relevant materials.

3.5 Improper service procedure

If TRAD fails to provide direct evidence proving that the party has received materials relevant to the case and yet is able to provide prima facie evidence that the party has been notified to participate in the review process, and the reasons and conclusions of the disputed ruling are not improper, the party’s claim that the service procedure is illegal may not be supported if one of the following circumstances occurs: (1) the party fails to claim a substantive reason other than the claim that the service procedure is illegal; or (2) in addition to claiming that the service procedure is illegal, the party also claims a substantive reason, but such reason is false or does not fall within the scope of review in this case. 

photo from: Beijing High People's Court