Weekly China Trademark News Updates

November 15, 2022

1. The Beijing IP Court held press conference on separation of complex and simple trademark administrative cases

On November 6, 2014, the Beijing IP Court was officially named as the first specialized court to strengthen judicial protection of intellectual property rights and a pilot court for judicial reform. The Beijing IP Court now has the exclusive jurisdiction over administrative trademark authorization and confirmation cases.

The number of trademark administrative cases accepted by the Beijing IP Court has soared from more than 5,500 in 2015 to more than 18,000 in 2021, accounting for more than 60% of the total number of cases received by the court, with an average annual growth rate of about 25%. Disputes over review of trademark rejections, invalidations, revocations, and non-registrations are the most common causes of action. Among them, 10,773 administrative trademark rejection cases were docketed in 2021, with an average annual increase of 29.4% from 2015.

In May 2021, the Supreme People’s Court issued the “Opinions on Promoting the Reform of Dividing Complex and Simple Administrative Proceedings.” In order to further implement the relevant provisions of the “Opinions,” the Beijing IP Court has promptly formulated the “Beijing IP Court’s Implementation Plan for Promoting the Reform of Administrative Litigation Proceedings for Separation of Complex and Simple Proceedings (Trial),” and will start pilot work on the separation of complex and simple administrative trademark authorization and confirmation cases starting from August 2021.

On November 8, the Beijing IP Court held a press conference on the separation of complicated and simple administrative trademark litigation, announcing

the status of the separation of complicated and simple administrative trademark disputes, specific measures taken, and typical cases.

Relying on high-speed operation of fast trial mechanism, the maximum number of cases closed by the Beijing IP Court’s fast trial team has exceeded 1,000 in 2020, and by 2021, that maximum number has exceeded 1,100.

For the cases that have been assigned to the simple proceeding, the fast trial team will specially hear the case. If the parties do not agree to use the simple proceeding, but the facts are clear, the relationship between rights and obligations is clear, and the disputes are not serious, such case will be tried as a simple case because it shall be tried quickly in accordance with the law. If, after reviewing the documents, investigating, and inquiring the parties, the court found that plaintiff’s lawsuit does not meet the statutory requirements for prosecution, it may make a direct ruling to dismiss the lawsuit. If evidence has been exchanged in the preparation stage before the trial, it will not be repeated during the trial. The facts of the case can be used as the basis for determining the facts of the case after being confirmed by all parties during court investigation. Trial records and judgments can be prepared based on the major factors of a case.

At the same time, the Beijing IP Court has tried two major proceedings, namely the “withdrawal and reassessment” proceeding and the pre-litigation settlement proceeding.

In addition, the Beijing IP Court actively promotes in-depth application of various information technology methods in all aspects of judicial trials, including electronic service, automatic generation of judgment documents, and electronic registration of the entire trademark administrative proceedings.

2. Introduction to typical cases of diversified solutions in Beijing IP Court

The Beijing IP Court has resolved more than 170 cases before trial since exploring multiple dispute resolution mechanism for administrative trademark cases in May 2022. We have selected a few typical cases for reference as follows.

Case 1: A domestic leading communication company sued the CNIPA for an administrative trademark rejection appeal dispute

Basic facts: the CNIPA found that the disputed mark and the cited mark constituted similar trademarks used on identical or similar services that violated Article 30 of the Chinese Trademark Law and rejected the disputed mark’s application for registration. Plaintiff appealed the CNIPA’s decision before the Beijing IP Court. During the pre-litigation resolution period, the cited mark in this case was revoked based on three-year non-use cancellation. After the court organized both parties to negotiate, both parties agreed to apply the withdrawal and reassessment proceeding. Plaintiff applied to the court in writing to withdraw the complaint and evidence submitted. The court granted approval after review and sent a notice of end of the pre-litigation mediation phase to both parties, and the CNIPA will make a new administrative decision based on the new facts after receiving the mediation decision.

Typical significance: This case is a typical case applying the withdrawal and reassessment proceeding. The reason for applying this proceeding is that the prior rights obstacle has been revoked and announced. This is one of the most common situations in administrative trademark cases, which is representative and typical.

Case 2: A domestic testing company sued the CNIPA for an administrative trademark rejection appeal dispute

Basic facts: the CNIPA found that the disputed mark and the cited mark 1 (subclasses 4209, 4220), cited mark 2 (subclass 4217), cited mark 3 (subclasses 4128 and 4227) and cited mark 4(subclass 4213) constituted similar marks used on identical or similar services that violated Article 30 of the Chinese Trademark Law and rejected the disputed mark’s application for registration in subclasses 4209, 4212, 4213, 4217, and 4218. Plaintiff appealed the CNIPA’s decision before the Beijing IP Court. During the pre-litigation resolution period, the registration of the cited mark 1 in subclass 4209  was revoked due to three-year non-use cancellation and a revocation announcement was published, which no longer constitutes an obstacle to the prior rights of the disputed mark registered in subclasses 4209 and 42.  The cited mark 2 was invalid because it was not renewed after the expiration date, and it no longer constitutes an obstacle to the prior right of the disputed mark to be registered in subclass 4217. After the court organized the parties to negotiate, plaintiff agreed to apply the withdrawal and reassessment proceeding, and while expressly abandoning the application for registration of the disputed mark in subclasses 4213 and 4218, and voluntarily promised not to file an administrative lawsuit against the CNIPA’s decision. In this case, the CNIPA also replied in writing to agree to the pre-litigation settlement. After plaintiff applied to the court to withdraw the complaint and evidence submitted, the court approved it after review and sent a notice of the end of the pre-trial mediation to both parties, and the CNIPA would make a new administrative decision based on the new facts.

 Typical significance: This case is a typical case in which the withdrawal and reassessment proceeding is applicable when plaintiff, after consideration, clearly stated that it would give up the application for registration of the disputed mark in some non-core services, and voluntarily made a written commitment not to file an administrative lawsuit against the CNIPA’s decision. The CNIPA also agreed to apply the withdrawal reassessment proceeding. The application of the withdrawal and reassessment proceeding in such cases provides a new idea for the further expansion of the scope of application of the mechanism.

Case 3: A foreign company sued the CNIPA for an administrative trademark rejection appeal dispute

Basic facts: the CNIPA found that the disputed mark and the cited mark 1 and cited mark 2 constituted similar marks used on identical or similar goods that violated Article 30 of the Chinese Trademark Law and rejected the disputed mark’s application for registration. Plaintiff appealed the CNIPA’s decision before the Beijing IP Court. After the CNIPA made its decision, all cited marks were revoked due to three-year non-use cancellation, and a revocation announcement was published. During the pre-litigation resolution, after the court organized the parties to negotiate, both parties preliminarily agreed to apply the withdrawal and reassessment proceeding. However, before the expiration of the pre-litigation resolution period, the court had not received the CNIPA’s consent letter for pre-litigation resolution, and the court docketed the case first. After the case was docketed, the court continued to organize both parties to resolve the case and subsequently received a letter of consent from the CNIPA to resolve the case, the court then approved plaintiff’s application for withdrawal. The CNIPA had made a new administrative decision based on the new facts.

Typical significance: This case is a typical case in which the withdrawal and reassessment procedure is applicable. In order to avoid long-term unresolved cases, the Beijing IP Court has set a pre-litigation resolution period for administrative trademark cases with reference to the relevant provisions on pre-litigation resolution of civil disputes. For cases where the status of the cited mark has not been affirmed within the pre-litigation resolution period, or new evidence has emerged, but the period is expiring and it is impossible to apply to the court for the application of the withdrawal and reassessment procedure in time, the court will docket the case in a timely manner. Once the case is docketed, the court can continue organizing the settlement before trial. For cases that meet the applicable standards of the withdrawal and reassessment proceeding, the parties can still apply for the proceeding during the litigation. This case is one of the typical situations in which the pre-litigation resolution has been transformed into a continuing resolution during the litigation.

Case 4: A daily necessities company in Guangzhou sued the CNIPA and a third party, a daily necessities company in Yiwu, in an administrative trademark rejection appeal dispute

Basic facts: In this series of cases, plaintiff sued a third party who registered the disputed mark in violation of Article 15, Article 19, paragraph 4, Article 32, and Article 44(1) of the Chinese Trademark Law and requested the disputed mark to be invalidated. After examination, the CNIPA found that the disputed mark violated Article 44(1) of the Trademark Law and invalidated the disputed mark. Plaintiff appealed the CNIPA’s decision before the Beijing IP Court, claiming that the disputed mark also violated Article 15 and Article 19(4) of the Trademark Law, and requested the court to revoke the sued decision and order the CNIPA to make a new decision. In the pre-litigation resolution stage, the court appointed a mediator from the People’s Mediation Committee for Intellectual Property Disputes of China Trademark Association to organize all parties to communicate and coordinate. Plaintiff clearly expressed his approval of the conclusion of the sued decision, voluntarily applied for the withdrawal of the documents filed in this series of cases, and no longer wish to docket the case. The court subsequently approved plaintiff’s withdrawal.

Typical significance: This series of cases are typical cases applying the pre-litigation resolution proceeding. They are among the first batch of trademark administrative cases that involved a third party and are successfully resolved before trial by court invited mediators. The scope of organizing resolution before trial, resolution ideas, resolution methods, and other aspects have certain exemplary significance.

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