Weekly China Trademark News Updates

July 4, 2023

1. Changes in the pre-docketing system of the Beijing Intellectual Property Court

Recently, the Beijing Intellectual Property Court has reformed the pre-docketing system. Previously, the pre-docketing system was only applicable to foreign, Hong Kong, Macao, and Taiwan entities, as the formality documents of such entities required notarization and legalization. Upon pre-docketing , relevant entities had to submit the notarized and legalized formality documents within three months, and such deadline is extensible during the pandemic, and the longest extension shall not exceed 3 months. After this reform, the scope of application of the pre-docketing system has been expanded to include another 2 situations where pre-docketing can be applied for administrative appeals for trademark refusal. An applicant shall submit a pre-docketing application within the legally stipulated time limit and shall clarify the reasons for the application and submit corresponding evidence or explanations. The court may grant different time limits for the applicant to supplement the formality documents based on the following three situations.

A. The plaintiff is a foreign, Hong Kong, Macao and Taiwan entity: the pre-docketing period is 3 months, beginning from the pre-docketing application date, an extension can be applied for, and the cumulative extension generally does not exceed 3 months;

B. Due to the unstable status of the cited mark (only for administrative appeals for trademark refusal): the pre-docketing period is 12 months, beginning from the pre-docketing application date, no extension is allowed; and

C. The plaintiff involved is a foreign, Hong Kong, Macao, and Taiwan entity and the status of the cited mark is unstable (only for administrative appeals for trademark refusal): the pre-docketing period is 12 months, beginning from the pre-docketing application date, and no extension is allowed.

Among them, situations B and C are only applicable to administrative appeals for trademark refusal. Application for pre-docketing due to the unstable status of the cited mark refers to that the cited mark is already in an unstable status before the sued decision is made, and the final outcome of the cited mark will have substantive impact on the outcome of the case. Under such circumstances, the applicant shall submit preliminary evidence showing the status of the cited mark is unstable along with the filing of the pre-docketing application, and explain the possible impact of the cited mark.

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