Case 2 Administrative Dispute over the trademark “Huayuan Pharmaceutical & Device”
[Basic Information]
Case No.: (2015) Beijing IP Administrative First Instance No. 177
(2016) Beijing Administrative Final Instance No. 2345
Plaintiff: Anhui Huayuan Pharmaceutical Co. Ltd.
Defendant: Trademark Office of the State Administration for Industry and Commerce
Third Party: Yixintang Pharmacy Chain Co., Ltd., Shanghai Jianyiwang Pharmacy Chain Co., Ltd.
[Case Brief]
No. 11988470 trademark “Huayuan Pharmaceutical & Design” (hereinafter referred to as “the trademark in dispute”) was applied for registration on January 4, 2013 by Anhui Huayuan Pharmaceutical Co. Ltd. (hereinafter referred to as “Huayuan”) for use on retail services for pharmaceutical under Class 35. The Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as “the Trademark Office”) issued the Notice of Negotiation over Applications on the Same Day (hereinafter referred to as “the Notice of Negotiation”) for the trademark in dispute in accordance with Article 4 of the Notice of the Trademark Office of the State Administration for Industry and Commerce on Effectively Conducting the Work Relating to the Application for the Registration of Newly Added Retail or Wholesale Service Trademarks (hereinafter referred to as “the Notice”) which stipulated a transitional period. Huayuan was dissatisfied with the Notice of Negotiation and filed an administrative litigation with the court of first instance, requesting to revoke the Notice of Negotiation and to review the validity of Article 4 of the Notice. The court of first instance found Article 4 of the Notice stipulating a transitional period illegal, and made a judgment to revoke the Notice of Negotiation and order the Trademark Office to reexamine its decision. Dissatisfied with the judgment of first instance, the Trademark Office appealed. The court of second instance found that the Notice of Negotiation, regarding the trademark in dispute as “applied on the same day” with the reference trademarks 1 and 2, clearly denied the legitimate rights and interests enjoyed by Huayuan according to paragraph 1, Article 31 of the Trademark Law, imposed a substantially adverse effect on its trademark application, and constituted a mature administrative action which was litigable. Article 4 of the Notice deemed dates “from January 1 to January 31 of 2013” as the “same day” and was not conform to Article 30 of the Trademark Law; new institutional arrangement was made in fact for relevant newly added service trademarks and was in violation of Article 31 of the Trademark Law. Given that Article 4 of the Notice violated Article 30 of the Trademark Law, the Notice of Negotiation also lacked a legal basis and belonged to administrative act in violation of law. Nevertheless, considering its revocation would cause great damage to interests of the general public, it was inappropriate to revoke the Notice of Negotiation. Accordingly, the court of second instance revoked the first-instance judgment and confirmed that the Notice of Negotiation violated the law.
[Comments]
Paragraph 1, Article 53 of the Administrative Litigation Law (2014 Amendment) includs regulatory documents into the scope of examination incidental to administrative litigations which is an important measure to improve the legal system of administrative litigation in China. In accordance with the above provision, this is the first case in the IP field with a judgement that a regulatory document developed by an administrative organization violated the law, playing a significant role in promoting the legal process of intellectual property and regulating the exercise of power of administrative organizations. The court of second instance distinguished between intermediate and mature administrative actions, strictly abided by provisions of the higher-level law, comprehensively analyzed the applicable situation of the regulatory document and the influence thereof on the basis of confirming illegality of the regulatory document, and ensured the reliance interests of the majority of trademark applicants and maintained the stability of social order by only confirming the illegality of the regulatory document without ruling to revoke the document. The proper application of relevant provisions of the Administrative Litigation Law in this case has a strong guiding significance for the examination of regulatory documents incidental to administrative litigation in the future.
photo from: jianke.com
