Alert 334 China - important new TRAB policy and 'well-known' mark guidelines


A recent policy change made by China's Trade Mark Review & Adjudication Board (TRAB), and the adoption of 'well-known' mark guidelines, introduce changes that will be important for many trade mark applicants in China.  This Alert provides a brief summary of both and comments on their significance.
 
TRAB policy Change
Previously, where an applicant appealed against a refusal to register based on an earlier conflicting mark, the TRAB would, on request, suspend the appeal pending resolution of action taken against the cited mark (e.g. non-use cancellation, cancellation (on other grounds), opposition and their appeals).   
 
Pursuant to a recent policy change aimed at reducing its backlog, TRAB will suspend appeals only where the action against the cited mark is an action being dealt with by the TRAB.   Where action has been taken before the China Trade Mark Office (CTMO), the TRAB will proceed to issue a decision on the appeal without waiting for the CTMO decision.  The TRAB decision will be issued in around six months.
 
Our Comment
The TRAB's new policy is likely to have unfortunate consequences for trade mark applicants.  Where action against a cited mark is pending before the CTMO, the TRAB appeal is almost certain to fail.  We, like other Chinese practitioners, have written to the TRAB expressing our concern, but it is unlikely that the policy will be reversed in the near future.
 
Where the TRAB appeal fails, applicants may lodge an appeal with the Court, and if the cited mark is cancelled during the appeal, the Court will refer the matter back to the TRAB for further review.  Alternatively, they may, despite obvious disadvantages such as loss of priority, decide to re-apply and explore alternative means of overcoming the citation.  In any event, in light of this policy, applicants should now consider taking action against any conflicting marks at a much earlier stage e.g. when they are located during a clearance search.  
 
'Well-known' mark guidelines
The TRAB has also issued guidelines for the granting of 'well-known' trade mark status.  The guidelines indicate matters that will be taken into account and evidence that should be provided by the trade mark owner.
 
Our comment
The new guidelines are intended to provide greater transparency and clarify the evidence required in support of a 'well-known' trade mark claim. 
 
The requirements are, however, more stringent than before and, although the burden of proof for extremely famous foreign marks appears to have been reduced, 'well-known' status may, in general, be harder to attain.  Also, the TRAB procedure for dealing with these claims has been made more complicated.