The long-awaited Supreme Court’s trademark judicial interpretation -“Provisions of the SPC on Certain Issues Related to Trials of Administrative Cases Involving the Grant and Confirmation of Trademark Rights” (“Provisions”) – has been just published in January 2017 and will enter into force on March 1st , 2017. The new Provisions address the outstanding challenges and issues in relation to trademark registration and enforcement, including bad faith trademark registration, well-known mark, and mechanizing rights. The Provisions contain some articles favorable to trademark owners’ future enforcement actions.
The highlights include:
Ex officio review of defects in TRAB’s decisions by the court:
- Art. 2 of the Provisions clarify that in principle, the court should only review the claims raised by the plaintiff. But if there are obvious defects in a TRAB decision, the court may adjudicate on the issues ex officio, after hearing the opinions from both parties.
Criteria for the distinctiveness of 3-D trademarks:
- The threshold for registering 3-D trademark seems to be raised a bit higher. Art. 9 of the Provisions stipulates that “Even the shape of the 3-D trademark is originally designed or first used, it does not necessarily create inherent distinctness.” The long-lasting and broad use seem to be a must for registering the shape of the products as a 3-D trademark. The wording is consistent with our understanding of the current rules.
Extended scope of prohibiting trademark agents and representatives from hijacking trademarks
- Art. 15 and 16 of the Provisions offer broader applications of Article 15(2) of the Trademark Law, e.g., listing 5 types of situations which fall into the definitions of “agents and representatives”. If the applicants are relatives of the agents and representatives, bad faith would be presumed.
Presumption of the ownership of copyright
- Article 19 of the Provisions provides practical means of proving the ownership of copyright. The design drafts, manuscripts, consignment contracts etc. could be used for presuming the existence of existing copyright. The prior trademark gazette or certificates could also be seen as initial evidence.
Protection of titles of copyright works as well as names and images of fictional characters
- Article 22 of the draft Provisions offers protection to the titles of copyright works as well as names and images of fictional characters, under the condition of “notoriety” and likelihood of association. The rules may contribute to clarification of the scope of “mechanizing rights” protection.
Protection of personal names
- Article 20 of the Provisions defines the conditions for protecting personal names, which requires the stable “association” between the person and the names. This is consistent with SPC’s opinion reflected in the “Jordan” case. Also, the Provision extends the protection of personal names to nicknames, pen names, translated name and the like.
Criteria for defining “bad faith” of well-known trademarks
- Article 25 of the Provisions further defines the conditions to identify “bad faith registration” of well-known trademarks.
Procedural issues are also touched upon in the Provisions.