1. Overview

The Trademark Review and Adjudication Board (TRAB) of the State Administration for Industry and Commerce published a review of litigation concerning its trademark decisions in 2015. It concluded approximately 108,000 trademark review cases. It received 6,618 first-instance judgments, up 59.2% year on year; 2,094 second-instance judgments, up 51.6%; and 179 retrial judgments, up 244.2%. In concluded cases, its success rate was 81.4% at first instance and 70.8% on appeal.

In 2015, parties challenged TRAB decisions in 7,632 actions before the Beijing Intellectual Property Court and Beijing No. 1 Intermediate People's Court, an increase of 2.4% from 7,452 in 2014. A total of 2,012 trademark review cases entered appellate proceedings before the Beijing High People's Court. Another 224 cases entered retrial examination or retrial proceedings before the Supreme People's Court, up 286.2% from 58 in 2014.

2. Reasons for adverse judgments: 2015 compared with 2014

Similarity of marks: 22% / 29%; similarity of goods: 11% / 16%; well-known marks: 6% / 10%; “other adverse effects” under Article 10(1)(8) of the Trademark Law: 5% / 10%; pre-emptive registration of a previously used mark with a certain influence: 2% / 3%; changed circumstances: 15% / 8%; coexistence agreements: 4% / 3%.

Article 10(1)(7) of the Trademark Law: 2% / 0.1%; distinctiveness: 6% / 5%; other prior rights: 6% / 5%; examination of collective and certification marks: 0.6% / 0%; use of marks under Article 44(4) of the 2001 Trademark Law: 6% / 2%; registration obtained by deceptive or other improper means: 1.2% / 0.6%; acceptance of new evidence: 14% / 8%; procedural issues: 6.2% / 3.8%.

Article 10(1)(7) prohibits the use as trademarks of deceptive signs likely to mislead the public about the quality or other characteristics of goods, or their place of origin.

3. Principal reasons for adverse judgments

First, changed circumstances and the courts' acceptance of new evidence led to a substantial increase in adverse judgments in 2015. Changes included cancellation or assignment of cited marks and their expiry without renewal. Courts generally did not restrict the evidence submitted by parties and accepted new evidence that had not been filed during administrative review.

Second, during the transition between the old and new Trademark Laws, some statutory provisions and examination standards remained unclear. Courts and TRAB therefore differed on issues such as Article 10(1)(7) and prior rights under Article 32.

Third, courts took a more permissive approach to trademark coexistence and to determining whether goods were similar.

Fourth, courts and TRAB differed in their understanding and application of standards relating to recognition and protection of well-known marks, distinctiveness acquired through use, certification and collective marks, and cancellation for three consecutive years of non-use.

Fifth, some TRAB proceedings involved procedural violations or errors in identifying similar goods.

Sources: http://www.cicn.com.cn/zggsb/2016-09/20/cms91051article.shtml ; http://www.51tm.net/content-57-10992-1.html