On January 11, 2017, Song Xiaoming, Chief Judge of Intellectual Property Rights Tribunal of the Supreme People's Court released to the press the Provisions of the Supreme People's Court on on Several Issues Concerning the Hearing of Administrative Cases on Granting and Affirming Trademark Rights (hereinafter referred to as the Provisions). The Provisions consisting of 31 Articles mainly relates to the substantive contents such as the scope  of examination, the determination of distinctions, and the protection of well-known trademark, protection of the prior rights such as the copyrights and the right of personal name, and the procedural contents such as the violation of legal procedures and the principle of non bis in idem, and provides interpretation about the significant issues concerning administrative cases involving granting and affirming trademark rights and offers explanation to the solution of legal issues hard to be treated in the judicial practice. The Provisions will take effect on March 1, 2017.

The Provisions highlights four points as below:

First, the Provisions makes explanations and interpretations and identifies the difference of articles in compliance with the original legislative intention of the Trademark Law. For example, the Provisions clarifies that “being identical with or similar to the State name of the People’s Republic of China” in Article 10.1.1 shall mean that a trademark logo identical with or similar to the State name, etc. on the whole shall not be used as trademark, and “those detrimental to socialist morals or customs, or having other unhealthy influences shall not be used as trademarks” in Article 10.1.8 shall mean that a trademark logo shall not be used as trademark provided the State name is part of the logo and the logo is not identical or similar to the trademark on the whole and where elements of the logo may have negative or adverse impact on China’s national dignity. For another example, the Provisions identifies the distinction in Article 5 and Article 24 about the difference of the “other adverse effects” prescribed in Article 10.1.8 and “other improper means” prescribed in Article 44.1, holding that the two terms respectively apply to situations where public interests and orders may be adversely affected and where trademark registration is disturbed, the public interests is harmed, public resources are improperly dominated and unjustifiable benefits are sought through means other than deceptions and that the acts that only harm specific civil rights and interests do not fall into the jurisdiction of the two Articles. Also, the Provisions clarifies in Article 5 and Article 16 about the “Agent or Representative” prescribed in Article 15.1 and “Other Relationships or Connections other than contractual and/or business relations” in Article 15.2 of the Trademark Law.

Second, the Provisions further puts into practice the Principle of Good Faith to protect prior rights and restrain malicious trademark squatting. In Article 7 of the New Trademark Law effective in 2013, the Principle of Good Faith is explicitly prescribed as a fundamental rule to be followed in registration and application of a trademark. And such legislative intention is fully represented in the Provisions with regard to the application of the Trademark Law so as to protect sincere and honest business and guard against malicious trademark squatting. For example, to deal with the malicious trademark squatting by the interested party of the agents or the representatives in judicial practice, the Article 15.3 of the Provisions prescribes that “where trademark applicants enjoy family relationship or other specific connections with agents or representatives, they can be presumed malicious in handling registration through their agents or representative, and the court shall hear the case in accordance with Article 15.1 of the Trademark Law. Under such circumstances, the trademark applicants maliciously collaborated with the agents or representatives can be treated as agents or representatives in an effort to give full play to Article 15.1 of the Trademark Law in restraining malicious trademark squatting. In addition, Article 18-22 of the Provisions stipulate the application of prior rights including prior copyright, name right, right to a trade name and right to a role image. Infringement upon the name right is under the spotlight, which relates to the acts of applying to register names of other parties as trademarks and using such trademarks without approval in trademark cases. The Provisions affirms the infringement upon names in the Article 20.1 which prescribes that “The relevant public may associate the trademark to the name of a natural person and may recognize that the products with such trademarks are authorized by the natural person or associated with the natural person. However, in practice, some cases involve claiming name rights for such specific names as pennames, stage name or translated name rather than names registered in the household registration system. For this, the Article 20.2 of the Provisions stipulates that the court shall uphold such claims provided the specific names are well known to certain public and are consistently associated to the natural person and provided that the public refers the name to the natural person. Therefore, the court can make a decision over whether the application of the disputed trademark is infringing upon the name rights based on the Article 20.1.

Third, regarding the therein in practice, as Article 22.2 of the Provisions involves the protection of names and characters in works, stipulating that “Provided the names and characters in works that are still protected by copyright are well known, the use of such names on products concerned may mislead the public that the names are used with the permission of obliges or specifically associated to the obliges. The court shall uphold claims by parties concerned for prior rights and interests.” Where names concerned do not fall under jurisdiction of copyright law, eligible names shall be protected by the “Prior Rights” in the Article 32 of the Trademark Law.

Forth, the Provisions will facilitate judicial examination, substantially improve the settlement of disputes and the efficiency in granting and affirming trademarks. According to Article 2 of the Provisions, the scope of the examination by court in granting and affirming trademarks is usually determined by litigation claims and cause of actions of the plaintiff. Where the plaintiff fails to claim and TRAB affirms the obviously improper act, the court can examine concerned causes and makes its judgment. Such practice represents the characteristics of the administrative cases and displays a philosophy of advocating judicial procedures and preventing waste of judicial resources. Meanwhile, as prescribed in the Article 30 of the Provisions, the court shall refuse to accept where the people’s court have already explicitly affirmed relevant facts and matters related to legal application in its effective judgments, and where the party concerned brings legal proceedings against the new decision made by the Trademark Review and Adjudication Board according to the effective judgment. And, for those cases accepted, the court shall make a decision to dismiss the lawsuit. However, this Article is not applicable provided the ruling made by TRAB introduces new facts or reasons. Such rules is conducive to avoid circulation lawsuit.

Besides, the Provisions also involves the trial standards of many other significant legal issues, such as the judgment on possible confusion and the judgment on the ownership of trademark copyright, etc. The Provisions is a critical measure by the Supreme Court to summarize its experience in practical trial and improve application standards of granting and affirming trademarks. The release of the judicial interpretation will facilitate a better order in trademark application and registering.