Higher People's Courts of all provinces, autonomous regions and municipalities directly under the Central Government, Military Courts of the People's Liberation Army, and Production and Construction Corps Branch of the Higher People's Court of Xinjiang Uygur Autonomous Region:
The "Opinions of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases of Trademark Authorization Confirmation" are hereby printed and distributed to you, please implement them carefully.
20 10 April 20th
Since the implementation of the Decision of NPC Standing Committee on Amending the Trademark Law of People's Republic of China (PRC) on February 1 2006, people's courts have begun to accept and hear administrative cases of trademark authorization and confirmation of specific administrative acts made by the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce, such as trademark rejection review, trademark objection review, trademark dispute and trademark revocation review. In order to better try the administrative cases of trademark authorization and confirmation, further sum up the trial experience, and clearly unify the trial standards, the Supreme People's Court held several special meetings, conducted special investigations, extensively listened to the opinions of relevant courts, relevant departments, experts and scholars, and studied and summarized the applicable legal issues in the trial of administrative cases of trademark authorization and confirmation. On this basis, according to the Trademark Law of People's Republic of China (PRC), the Administrative Procedure Law of the People's Republic of China and other legal provisions, combined with trial practice, the following opinions are put forward for the trial of such cases:
1. When trying administrative cases of trademark authorization and confirmation, the people's courts can properly and strictly grasp the standards of trademark authorization and confirmation according to law, fully consider the interests of consumers and trade operators, effectively curb unfair cybersquatting, pay attention to protecting the rights and interests of prior trademarks, enterprise names and other commercial symbols with high visibility and strong distinctiveness to others, and eliminate businesses as far as possible. For trademark disputes that have been used for a long time and have established a high market reputation and formed relevant public groups, we should accurately grasp the legislative spirit of the Trademark Law on coordinating the protection of the rights and interests of prior commercial trademarks and maintaining market order, fully respect the market reality that the relevant public has objectively distinguished relevant commercial trademarks, and pay attention to maintaining the formed stable market order.
2. In practice, although some signs or their constituent elements are exaggerated, they are not misleading according to the daily life experience or the common understanding of the relevant public. In this case, the people's court should not regard it as an exaggerated and deceptive sign.
3. When examining and judging whether the sign constitutes other adverse effects, the people's court shall consider whether the sign or its constituent elements may have a negative impact on China's political, economic, cultural, religious, ethnic and other social interests and public order. If the registration of the relevant trademark only damages the specific civil rights and interests, it should not be regarded as a case with other adverse effects because the Trademark Law has separate provisions on relief methods and corresponding procedures.
According to the Trademark Law, the place names of administrative divisions at or above the county level or foreign places known to the public are generally not allowed to be used as trademarks. In practice, some trademarks are composed of place names and other elements. In this case, if a trademark has obvious characteristics on the whole because of the addition of other elements, it no longer has the meaning of place names or does not take place names as the main meaning, it should not be considered as a trademark that cannot be registered because it contains place names of administrative divisions at or above the county level or foreign place names that are well known to the public.
5. The people's court shall, when trying the administrative case of trademark authorization confirmation, examine and judge whether the trademark has obvious characteristics as a whole according to the common understanding of the relevant public who are controversial about the designated use of the trademark. Descriptive elements contained in a trademark do not affect the distinctive features of the trademark as a whole, or descriptive marks are expressed in a unique way, and the relevant public can identify the source of goods by them, which is regarded as having distinctive features.
6. When trying an administrative case of trademark authorization confirmation, the people's court shall, according to the common sense of the relevant public in China, examine and judge whether the disputed foreign trademark has distinctive features. Although the foreign language in the litigation mark has inherent meaning, if the relevant public can identify the source of the goods with the mark, it will not affect the identification of its distinctive features.
7. When judging whether the disputed trademark is a generic name, the people's court shall examine whether it is a legal or established commodity name. In accordance with the provisions of laws or national standards and industry standards, it shall be recognized as a common name. If the relevant public generally believes that a name can refer to a commodity, it should be recognized as a common name established by convention. Those listed as commodity names by professional reference books and dictionaries can be used as a reference for identifying established common names.
The commonly used generic names are judged by the common understanding of the relevant public in the country. For commodities with relatively fixed related markets due to historical traditions, local customs, geographical environment and other reasons, it can be recognized that the common names in related markets are called common names.
Where the applicant knows or should know that the trademark applied for registration is a commodity name established in some areas, the trademark applied for registration shall be regarded as a generic name.
8. When examining and judging whether the disputed trademark belongs to a generic name, the people's court generally takes the factual state at the time of filing the application for trademark registration as the standard. If it is not a generic name at the time of application, but the disputed trademark has become a generic name at the time of approval and registration, it shall still be recognized as the generic name of the commodity; Although it belongs to the common name of the commodity at the time of application, it is not the common name at the time of approval of registration, so it does not prevent it from obtaining registration.
9. If a sign only or mainly describes and explains the quality, main raw materials, functions, uses, weight, quantity and place of origin of the goods used, it shall be deemed as not having obvious characteristics. Signs or their constituent elements imply the characteristics of goods, but do not affect their function of identifying the source of goods, which does not belong to the above situation.
10. The people's courts may refer to Articles 5, 9 and 10 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Laws in the Trial of Civil Disputes Involving the Protection of Well-known Trademarks when trying administrative cases involving trademark authorization.
1 1. For well-known trademarks registered in China, we should pay attention to their well-known degree when determining the protection scope of dissimilar products. For well-known trademarks that are widely known to the public and have been registered in China, when determining the scope of protection of similar commodities, a wider scope of protection should be given commensurate with their popularity.
12. If a trademark agent or representative or an agent or representative in the sense of sales agency relationship such as distribution or agency registers the trademark of the principal or representative in his own name without authorization, the people's court shall hold that it belongs to the act of the agent or representative preempting the trademark of the principal or representative. In the trial practice, some cybersquatting behaviors occur when the relationship between the agent and the representative is still in the negotiation stage, that is, cybersquatting comes first, and the relationship between the agent and the representative is formed later. At this time, it should be regarded as the cybersquatting behavior of agents and representatives. Where an applicant for trademark registration colludes with the above-mentioned agent or representative to register, he may be regarded as an agent or representative. According to the specific identity relationship between the trademark registration applicant and the above-mentioned agent or representative, collusion in cybersquatting can be inferred.
13. Trademark marks that an agent or representative may not apply for registration include not only the same marks as those of the principal or representative, but also similar marks; The goods that may not apply for registration include not only the same goods as the trademark of the principal or representative, but also similar goods.
14. When trying administrative cases of trademark authorization confirmation, the people's courts may refer to the relevant provisions of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Trademark Civil Disputes.
15. When examining and judging whether the related goods or services are similar, the people's court shall consider whether the functions, uses, production departments, sales channels and consumer groups of the goods are the same or have significant relevance; Whether the purpose, content, mode and object of the service are the same or have great relevance; Whether there is a great connection between goods and services, whether it is easy for the relevant public to think that goods or services are provided by the same subject, or whether there is a specific connection between their providers. The international classification table of goods and services registered by trademarks and the classification table of similar goods and services can be used as a reference for judging similar goods or services.
16. When determining whether a trademark is similar, the people's court should not only consider the constituent elements of the trademark symbol and its overall similarity, but also consider the distinctiveness and popularity of the related trademark, the relevance of the goods used and other factors, and take whether it is easy to lead to confusion as the judgment standard.
17. It is necessary to correctly understand and apply the general provisions of Article 31 of the Trademark Law that "the application for trademark registration shall not damage the existing prior rights of others". When examining and judging whether the disputed trademark damages the existing prior rights of others, the people's court shall protect the prior rights that have been specially stipulated in the Trademark Law in accordance with the special provisions of the Trademark Law; Although there is no special provision in the Trademark Law, those legitimate rights and interests that should be protected according to the General Principles of the Civil Law and other laws should be protected according to the general provisions.
When the people's court examines and judges whether the disputed trademark damages the existing prior rights of others, it generally takes the filing date of the disputed trademark as the standard. Where the prior right no longer exists when the disputed trademark is approved for registration, the registration of the disputed trademark shall not be affected.
18. According to the provisions of the Trademark Law, the applicant shall not preemptively register a trademark that has been used by others and has certain influence by unfair means. If the applicant knows or should know that someone else has used and registered a trademark with certain influence, it can be considered that he has taken improper means.
Trademarks that are actually used in China and are known to a certain range of relevant public should be recognized as trademarks that have been used and have certain influence. If there is evidence that the prior trademark has a certain duration of use, area, sales volume or advertising, it can be considered to have a certain influence.
Trademarks that have been used and have certain influence should not be protected on similar goods.
19. When trying an administrative case involving the cancellation of a registered trademark, the people's court shall examine and judge whether the disputed trademark is registered by other improper means, and consider whether it is a means other than deception that disturbs the order of trademark registration, harms public interests, improperly occupies public resources or seeks illegitimate interests by other means. Cases that only damage specific civil rights and interests shall be examined and judged by applying the second and third paragraphs of Article 41 of the Trademark Law and other corresponding provisions of the Trademark Law.
20. When trying an administrative case of revoking a registered trademark that has been stopped for three consecutive years, the people's court shall correctly judge whether the acts involved constitute actual use according to the legislative spirit of the relevant provisions of the Trademark Law.
The trademark owner's own use, permission to others to use and other uses that do not violate the will of the trademark owner can be regarded as actual use. Although there are subtle differences between the actually used trademark and the registered trademark, but its distinctive features have not changed, it can be regarded as the use of the registered trademark. If there is no actual use of a registered trademark, only the act of transferring or licensing, or only the publication of trademark registration information or the statement of its exclusive right to use a registered trademark, it should not be regarded as trademark use.
The trademark owner fails to actually use the registered trademark or stops using it due to objective reasons such as force majeure, policy restrictions, bankruptcy liquidation, etc. , or the trademark owner has the intention to actually use the trademark and has the necessary preparations for actual use, but he has not actually used the registered trademark for other objective reasons, which can be considered as legitimate.