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30 April 2021
Recently, the newly built so-called Trademark Review and Adjudication Tribunal (hereafter referred to as the Trademark Review Tribunal) of the China Trademark Office was officially put into use in the China Trademark Building, marking an official opening of the normalization of “oral trial” and “offline + online” work mode of trademark review.
The Trademark Review and Adjudication Division of the China Trademark Office under the China National Intellectual Property Administration (hereafter referred to as the Review Division), the former Trademark Review and Adjudication Board (TRAB), is in charge of the examination of reviews of decisions made by the Trademark Examination Division of the China Trademark Office, including reviews of refusal, reviews of disapproval, reviews of non-use cancellation and also invalidation actions against registered trademarks.
In accordance with Article 60 of the Implementing Regulations of China Trademark Law, the Review Division may, at the request of the parties or at its own discretion, decide to hold an oral trial for a review case. But for a long time, the review cases had been mainly adjudicated in writing. Among other reasons, the obvious one is the increasing number of review cases in contrast to the limited resources in the hands of the Review Division, facing huge pressure to clear backlog. According to statistics, for the year 2020 alone, the Review Division received about 367,000 cases of all kinds. In accordance with the China Trademark Law, the examination of a review of refusal or disapproval of trademark application should be closed within nine months, and the examination for an invalidation action should be completed within 12 months. The Review Division is bound by legal time limit of examination, while at the same time, must face the challenge of increasing number of cases.
For important cases, the parties would feel it necessary to request a face-to-face meeting with the examiners as to better explain their grounds and evidence. But such meetings were informal and could not be recorded in files for the examiners to take into consideration. Facing the increasing need of the applicants and the appeal of the public for an open trial, the CNIPA issued the Measures for Oral Trial of Trademark Review Cases (hereafter referred to as the Measures) on May 4, 2017. According to Article 3 of the Measures, if a party to a trademark review and adjudication case has doubts about the relevant evidence of the case and thinks that it is necessary to cross examine the evidence on the spot, he may request for an oral trial. The request shall be submitted in writing and the reasons shall be explained. If the Review Division considers it necessary, it may decide to hold an oral trial.
Given the chance of an oral trial, the parties concerned may cross examine the evidence and make arguments, stating opinions on the disputing legal issues, which will help the examination tribunal to ascertain the facts and to make a decision.
The layout of the oral trial procedure shows that it is an important supplementary procedure to the trademark adjudication by record, rather than an independent procedure. The other procedures, including application, response, adjudication and issuance of decision in cases with an oral trial are the same as the cases with adjudication by record only. It is a supplementary procedure at the evidence cross-examination stage, for the purpose of fact finding.
In recent years, the CNIPA has taken great efforts to promote public trademark review, implement oral trial procedures and construct review circuit tribunals outside Beijing, as to actively accept social supervision and fully protect the legitimate rights and interests of the parties. The oral trial is helpful for the examiners to find out the facts of the case more accurately, further improve the quality of the administrative decision and effectively protect the legitimate rights and interests of the parties. In September and October 2019, the CNIPA conducted a tour review in Shanghai, Yiwu and Nanjing, and held oral trials on the complicated cases locally. On September 22, 2020, the first Trademark Circuit Review Tribunal established by the China Trademark Office was inaugurated in the Shanghai Trademark Review and Cooperation Center.
On the date of opening of the Trademark Oral Trial Tribunal in the China Trademark Building, the Review Division held online oral trials for two complicated trademark invalidation cases, involving the issues of ownership of well-known trademarks and time-honoured Chinese brands in the reform of state-owned enterprises. On the basis of in-depth analysis and study of the case, the examination panel made clear the disputes of the cases, carefully listened to the explanations of the parties, fully inquired about the key issues and organized cross examination, and thoroughly identified the history, originality and use of the relevant trademarks, which laid the foundation for better adjudication and full protection of the legitimate rights and interests of the parties, effectively settling disputes.
The Measures do not limit the types of cases applicable to oral trial. The applicants of reviews of refusal, especially cases involving the use of acquired distinctiveness, collective and certification trademarks of geographical indications, and so on, wherein the evidence is very important to support the claims of the parties, there is also the possibility and the necessity of oral trial.
There are two ways to initiate the oral trial procedure, i.e. by request of the applicant and at the discretion of the Review Division. In the case of the former, the Review Division may dismiss the request if it considers the facts clearly ascertained. We need to be mindful of the timing for requesting an oral trial. If the applicant requests an oral trial, he shall make the request at the time of filing the application for review or at the latest within 30 days from the date of receiving the copy of the respondent’s reply; if the respondent requests an oral trial, he shall submit a written request together with the response or supplementary evidence. Before the oral trial, the Review Division shall announce the relevant information of the oral trial case in its office, official website, newspapers and periodicals. The number of participants in an oral trial, including the entrusted agent, shall not exceed two, except with the consent of the Review Division. The party or parties concerned shall present all the evidence submitted in the review during the oral trial for cross examination by the other party. With the consent of the Review Division, witnesses may be invited to testify in the oral trial. Members of the collegial panel may inquiry the parties or witnesses about relevant facts and evidence and may require the parties or witnesses to give explanations; when necessary, they may require the witnesses to confront each other. The clerk or the members of the panel designated by the presiding examiner shall record the important matters of oral trial. In addition to the written record, the collegial panel can also record it with audio and video recording equipment. In the course of oral trial, both parties can reach a settlement agreement.
Oral trails held online make it easier for the parties to participate without taking the trouble to travel, reducing costs, and improving efficiency of trial, especially in view of the Covid-19 pandemic. It could be expected that online oral trials for trademark review and adjudication cases will be held more frequently. But how soon would it tend to become a routine? Nevertheless, with about 367,000 cases annually, the Review Division can only try some of the cases orally, most likely those complicated ones or those of wide public concern. In the meantime, we will be waiting to see official rules to be announced, providing guidelines to both the examiners and the applicants on how to cross-examine and to ascertain evidence presented in an oral trial, so as to make the most of the oral trial in the trademark review and adjudication procedure. No doubt with the newly built Trademark Review Tribunal put in use now, we will expect to see more oral trials for interesting review cases, both online and offline, adapted to the needs of the development of a more open and transparent trademark review and adjudication system.
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