At a news conference on January 11^th, 2017, the Supreme Court issued the Provisions of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases Involving Trademark Rights Licensing and Confirmation. The Provisions consist of 31 clauses dealing with (i) substantive issues such as the scope of examination, the determination of distinguishing features, the protection of well-known trademarks and the protection of prior copyrights and name rights, and (ii) procedural issues such as the violation of legal procedures and non bis in idem. The Provisions also clarified important questions relating to administrative trademark rights licensing and confirmation, as well as problems in judicial practice.

   Key issues at the conference included:

   (I) The rapid rise in the number of cases involving trademark licensing and confirmation

   The 2001 Amendment to the Trademark Law included trademark licensing and confirmation within the scope of the judicial examination of the People’s Court. Recent years have seen a surge in cases of this kind. The Beijing IPR Court, for example, accepted 7,545 first trial cases in 2015, among which 5,501 were administrative cases for trademark licensing and confirmation, or 73% of all first trial cases.

   (II) Advocacy of integrity and credibility and a crackdown on malicious trademark squatting

   The 2013 Amendment of the Trademark Law establishes “integrity and credibility” as basic principles for the trademark registration applications. The Provisions represent a full embodiment of that principle in terms of the application of specific provisions of the Trademark Law, and they reflect the consistent judicial principles of protection of honest business operations and opposition to malicious trademark squatting. One example is the paragraph in the Provisions that states. “…if there is any special relationship between the trademark registrant and the attorney or representative, such as kinship relations, it can be presumed that the trademark registrant colluded or conspired with the abovementioned attorney or representative, in which case the People’s Court may apply the first paragraph of Article 15 of the Trademark Law”. In other words, a trademark registrant who colludes or conspires with an attorney or representative is also treated as an attorney or representative, thereby strengthening the prohibition against trademark squatting based on the abovementioned provision.

   Moreover, the Provisions call for the protection of prior copyrights, name rights, and rights and interests in shop names and character images.

   (III) Protection of prior character name rights in works
    According to the Provisions, “…for works within the duration of copyright protection, where the name of the work or the name of a character in the work enjoys a high public profile, and the use of such name as a trademark on related categories of goods can easily mislead the relevant public into believing that it is authorized by the work’s original rights holder or the character has other specific relations with such rights holder, the People’s Court shall uphold the rights holder’s claim to its corresponding prior rights and interests.”

Via www.court.gov.cn