New Revision of Rules for Trademark Review and Adjudication

"Rules for Trademark Review and Adjudication" (hereafter called "The Rules") was newly revised on September 26, 2005 and put into force on Oct. 26, 2005. This revision is the second one after The Rules was promulgated in 1995. The Rules are regulated in accordance with the Chinese Trademark Law and the Implementing Regulations of Chinese Trademark Law and used as detailed rules when Trademark Review and Adjudication Board (hereafter called "TRAB") exams Review and Adjudication cases.

In this Second Revision, The Rules have some prominent amendments as follows:

A. With regard to Mediation

Rule 8: During trademark review and adjudication, parties of the case have right to treat with their own trademark rights and other rights relating to the Review and Adjudication. Upon consideration of public interests and the rights of third parties, parties of the case can reach amicable settlement in written form by themselves, TRAB can also mediate between the parties.

Rule 32: …Parties in one case reach amicable settlements themselves or through the mediations of Trademark Review and Adjudication Board (TRAB), and terminates the review and adjudication case, TRAB will dismiss the case, notify the parties in written form and state the reasons.

Commentary:

In China, mediation is a very practical tactic to settle conflicts and has a long history. Encouraging mediation is in favor of efficiency raising of China's trademark review and adjudication work. In recent years, more and more trademark conflicting cases are settled amicably through compromising and mediations by involved parties, this proves that proper use of compromising and mediation can bring speedy and reasonable solve of disputes on trademark rights.

Of course, Trademark right as intellectual property has different characteristics comparing with ordinary civil rights, the parties, at time of solving disputes by compromising or mediation, cannot disobey the general principle in trademark right settlement, i.e., the justification of the precondition.

According to the Rules 8 and 32 as well as the current practice, TRAB would put itself in the leading position in the amicable negotiations and mediations between parties, which could also ensure no public interests or the rights of a third party are impaired.

B. With regard to evidences submission, exchange, query and time period

Rule 20: Where parties of the case needs to supplement related evidences after filing of/responding to the review and adjudication case, such should be stated in the application form/response, and the supplementing evidences shall be filed at one time within three months with number of copies same to the application or response… However, said three-month supplementary period does not applied to evidences of new facts formed after the period or when there are justified reasons.

If a case involves an opposite party, TRAB shall send a copy of the supporting evidences to the opposite party, and request the opposite party to query and challenge the related evidences in a statutory period.

Commentary:
The said rule emphasizes that the supporting evidence in a case which involves two or more than two parties should be exchanged and query by parties, which is a basic rule of the evidences in adjudication cases.

Further, this rule clearly stipulates that the rules for accepting the evidences for adjudication cases after the statutory period, which is more fair and practical. It gives the parties more chances to supplement new evidences and it would be favorable to the parties if some crucial evidences are formed after the statutory period.

C. With regard to evidences formed outside Mainland China

Rule 43: Where evidence a party submitted to the TRAB is formed outside the territory of the People's Republic of China, or is formed in Hong Kong, Macao and Taiwan, if the counter party has doubt about the truth of the evidence and has relevant evidence to support its doubt, or TRAB thinks it necessary, the party which submits the doubtful evidence should make it notarized and legalized.

Commentary:
Comparing with the handling in foreign countries of foreign formed evidences, the old rules are too restricted and bound the TRAB itself (TRAB requested all the evidences formed outside the territory of the People's Republic of China including Hong Kong, Macao and Taiwan to be notarized and legalized), which also increased workload of both TRAB and the applicants. The new rule makes it more flexible, only when the counter party has doubt and such doubt is supported by evidences, or TRAB believes it necessary, the related evidences should be notarized and legalized, normally they do not need to be notarized and legalized.

(Adapted from "China Industry & Commerce News")