On October 15, 2014, Rule 14 of the Provisions of the Supreme People’s Court (SPC) on Several Issues concerning the Trial of Administrative Cases Involving the Granting and Determination of Trademark Right (Draft for Comment) was released with two different opinions regarding the weight of evidence of trademark registration certificate and trademark gazette in determining copyright ownership. The first opinion provides that, “trademark gazette, trademark registration certificate, etc. may serve as preliminary evidence to ascertain the copyright owner or the interested party thereof. Where the applicant of the disputed trademark opposes, that applicant has the burden to provide counter evidence to support his opposition.” The second opinion, however, provides that “mere trademark registration certificate, trademark gazette” “shall not be used solely to prove the copyright ownership, but may serve as the preliminary evidence of the work’s copyright ownership if combine with other related evidence.” In fact, regarding whether mere trademark registration certificate or trademark gazette alone may serve as the prima facie evidence of the copyright ownership, there are recurring conflicting approaches in administrative and judicial practices, as well as quite heated discussions.

Mr. Jason WANG, partner at Beijing East IP Law Firm, recently wrote an article, summarizing the top ten noteworthy issues. And such article was published on the website of Judicial Protection of China IP Rights (http://www.chinaiprlaw.cn/file/2014121834983.html) on December 18, 2014. In addition, Mr. Jason WANG has submitted relevant comments and opinions to the Supreme People’s Court. Mr. Jason WANG’s specific suggestions are as follows:

1. Adopt the first opinion. Namely, trademark gazette, trademark registration certificate, etc. may serve as the prima facie evidence to ascertain the copyright owner or the interested party thereof; where the applicant of the disputed trademark objects, that applicant has the burden to provide counter evidence to support his objection.

2. Distinguish the different situations based on different degree of stability for the trademark.

1) The trademark registration where the time limitation for the dispute has expired may serve as prima facie evidence to ascertain the copyright owner or the interested party thereof. The time limitation for dispute for the trademark registration in China is five years; and foreign trademark registration shall comply with the time limitation provided in such local laws, with reference to provisions of Chinese law.

2) Trademark registration where the time limitation for dispute has not expired may serve as prima facie evidence to ascertain the copyright owner or the interested party thereof, or may serve as prima facie evidence of the work’s copyright ownership if combined with other related evidence.

3) Unregistered trademark may be considered to serve as prima facie evidence of the work’s copyright ownership if combined with other related evidence.

3. Consider further clarify explicit limitation, where the ascertained copyright owner or the interested party thereof based on trademark gazette and/or trademark registration certificate shall apply only to administrative cases involving determination of trademark right, and shall not apply to copyright infringement cases.