CBL’s Introduction
China’s Trademark Trial and Appeal Rules govern how any disputes between parties or with trademark examiners must be heard. Many rules are totally unique to China and do not have an equivalent in the US/EU. Of particular note, the rules contain a hierarchy of evidence system that requires giving deference to Chinese governmental information. Cumbersome and prohibitive consular legalization procedures are required for any evidence that is taken from outside China, and conflicts very strict deadline requirements. Finally, notice can be served on a party in Mandarin Chinese by publication in a Mainland China newspaper, which frequently results in forfeiture by foreign trademark owners.
The following set of rules was translated by CBL into American English.
Contents
Chapter 2 Petition and Acceptance
Chapter 5 Time Limits and Service of Process.
Trademark Trial and Appeal Rules
Issued by the Trademark Trial and Appeal Board on May 30, 2014, under Order No. 65 of the National Administration for Industry and Commerce.
The Trademark Trial and Appeal Rules are hereby issued by the National Administration for Industry and Commerce and will take effect on June 1, 2014.
Director Zhang Mao
May 28, 2014
Trademark Trial and Appeal Rules
(Originally issued on November 2, 1995, by Order No. 37 of the National Administration for Industry and Commerce; amended on September 17, 2002, by Order No. 3; September 26, 2005, by Order No. 20; and May 28, 2014, by Order No. 65)
Chapter 1 General Provisions
Section 1 The purpose of the Rules is to standardize trademark trial and appeal procedures pursuant to the Trademark Act of the People’s Republic of China and the Trademark Act of the People’s Republic of China Administrative Regulations (the “Trademark Act” and “Administrative Regulations”).
Section 2 Under the Trademark Act and its Administrative Regulations, the Trademark Trial and Appeal Board (the “Board”), under the National Administration for Industry and Commerce (the “Administration”), is responsible for:
(a) Hearing appeals against refusals of trademark applications by the Trademark Office under the Administration (the “Trademark Office”) filed under §34 of the Trademark Act;
(b) Hearing appeals against refusals of trademark registrations by the Trademark Office filed under §35(c) of the Trademark Act;
(c) Adjudicating petitions for the invalidation of registered trademarks filed under §§44(a) and 45(a) of the Trademark Act;
(d) Hearing appeals against registered trademark cancellation decisions by the Trademark Office filed under §44(b) of the Trademark Act;
(e) Hearing appeals against canceling or maintaining a registered trademark filed under §54 of the Trademark Act.
For the purposes of trademark trial and appeal proceedings, the trademarks set forth in Item (a) above are collectively referred to as “application trademarks,” Item (b) are “opposed trademarks,” Item (c) are “disputed trademarks,” and Items (d) and (e) are “trademarks under adjudication.” Collectively, these are referred to as “trademarks under adjudication.”
Section 3 Parties to trademark trial and appeal proceedings may submit supporting materials in writing or via data message.
Instructions for data message submissions will be issued by the Board.
Section 4 The Board will conduct trademark adjudications in writing unless an oral hearing is requested under §60 of the Administrative Regulations.
The Board shall issue oral hearing procedures as necessary.
Section 5 All decisions and rulings made by the Board pursuant to the China Trademark Act, and the Administrative Regulations, and these Rules shall be delivered to the interested parties in writing or via data message, with reasons stated.
Section 6 Unless otherwise provided in these Rules, matters in trademark adjudications shall generally be addressed by a panel of judges consisting of no fewer than three members, and total membership shall be an odd number.
Decisions on matters heard by the panel shall require a majority vote.
Section 7 Any party or stakeholder may submit a written request, with reasons provided, for the recusal of a panel member pursuant to §7 of the Administrative Regulations.
Section 8 All parties to a trademark adjudication are entitled to manage their trademark rights and associated rights. They may independently negotiate or mediate a dispute to reach a written settlement, provided no public interest or third-party rights are impaired.
Upon settlement, the Board may dismiss the case or issue a stipulated order or decision acknowledging the settlement.
Section 9 Where multiple petitioners or jointly owned trademark registrants file for trademark adjudications, they must designate a representative pursuant to §16(a) of the Administrative Regulations.
All actions taken by the representative shall bind the principals, except when an amendment, waiver, or acknowledgment of a request made by the opposing party requires prior written authorization from a principal.
All documents issued by the Board shall be served on the representative.
Section 10 A foreign national or foreign business entity with a permanent domicile or place of business in China may resolve trial and appeal matters independently or using a licensed trademark service provider; if they lack a permanent address, authorize a trademark service provider to act on its behalf.
Section 11 Interested parties in trademark adjudications shall promptly notify the Board of any change to agency authority, the termination of an agency relationship, or the replacement of an agent in writing.
Section 12 An interested party or their agent may request access to case materials pertaining to adjudication proceedings.
Chapter 2 Petition and Acceptance
Section 13 Petitions for trademark adjudications must meet the following conditions:
(a) The petitioner is the proper party;
(b) The petition is filed within the statutory deadline;
(c) The matter falls under the subject matter jurisdiction of the Board;
(d) The petition and supporting materials conform to legal requirements;
(e) The petition clearly states the facts, reasons, and a legal basis;
(f) All trademark adjudication fees are paid.
Section 14 A petitioner shall file a written petition with the Board, along with additional copies for each respondent where applicable. If the trademark under adjudication is in the process of transfer, assignment, or registration amendment before the Trademark Office, the petitioner must submit proof of such proceedings. Where the petition challenges a Trademark Office decision, a copy of that decision must be included.
Section 15 A petition shall include:
(a) The petitioner’s name, correspondence address, contact person, and telephone number. If a respondent is involved in the adjudication, the respondent’s name and address must be included. If a trademark services provider is authorized to act on the petitioner’s behalf, its name, address, contact person, and telephone number must be included.
(b) The trademark under adjudication, its application number or preliminary approval number, registration number, and the issue number of the official gazette where the trademark registration was published.
(c) A clear statement of facts, reasons, and legal grounds for filing the petition.
Section 16 The Board shall refuse any petition that does not conform to the requirements in §§13(a), (b), (c), or (f) of these Rules, and shall notify the petitioner of the refusal in writing, with reasons provided.
Section 17 If a petition does not conform to §§13(d) 13(e) of these Rules, lacks documentation required under the Administrative Regulations and these Rules, or otherwise requires correction, the Board will notify the petitioner to make corrections within 30 days from the date of receiving the notice.
The Board will reject any corrected petition for trademark adjudication that remains non-compliant and notify the petitioner in writing, specifying the reasons for the rejection. The petitioner will be deemed to have withdrawn their petition if they fail to correct it by the statutory deadline, and the Board will so notify the petitioner in writing.
Section 18 Upon acceptance of a compliant petition, the Board will issue a Notice of Acceptance to the petitioner within 30 days.
Section 19 The Board shall refuse petitions that have already been accepted if any of the following circumstances arise, pursuant to §57 of the Administrative Regulations:
(a) The petitioner withdraws a petition and subsequently files a petition based on identical facts and reasons in violation of §62 of the Administrative Regulations
(b) The petition asserts the same facts and reasons as a petition in a previous Board ruling in violation of §62 of the Administrative Regulations;
(c) Other instances where the petition fails to meet the criteria for acceptance.
However, a petition to invalidate a registered trademark shall be exempt from Subsection (b) above if the trademark was initially refused but later approved on appeal.
The Board shall notify the petitioner of refusal decisions in writing, with reasons provided.
Section 20 Interested parties in trademark trial and appeal proceedings shall submit copies of their petitions, defenses, statements of opinion, rebuttals to evidence, and other documentation required in quantities matching the number of opposing parties. All copies must be identical to the originals. Any failure to comply with these requirements despite making corrections will result in the adjudication petition being dismissed pursuant to §17(b) of these Rules or treated as being submitted without supporting documentation.
Section 21 Once the Board accepts a petition, it shall promptly send a copy of the petition and its supporting documentation to any respondent involved in the proceedings. The respondent shall submit an answer in writing and sufficient copies to the Board within 30 days of receiving the petition materials. Failure to answer within the deadline shall not hinder the Board’s adjudication.
When reviewing an appeal against the Trademark Office’s refusal of a trademark registration, the Board will notify the original opposer and invite them to participate in the appeal and submit allegations. The original opposer must submit any allegations and necessary copies to the Board within 30 days of receiving the notice. Failure to respond by the deadline shall not hinder the Board’s adjudication.
Section 22 Respondents in adjudication proceedings and original opposers in appeals against trademark registration refusals must be a proper party.
All defense answers, allegations, and supporting documentation shall be filled out and submitted as required.
If submissions are non-compliant with §22(b) or otherwise deficient, the Board shall issue a correction notice to the respondent or original opposer, requiring correction within 30 days of receipt. Failure to conform to these Rules or make corrections within the deadline will be treated as a waiver of the right to answer or make allegations and shall not affect the Board’s adjudication.
Section 23 If a party intends to submit additional evidence after filing a petition for adjudication or defense, the party must note this in the petition or defense and provide the additional evidence in a single submission within three months of the filing date. Failure to do so within the deadline shall constitute a waiver of the right to submit additional evidence. However, the Board may authorize late submissions if the evidence became available after this period or if extenuating circumstances exist, subject to review and cross-examination by the opposing party.
The Board shall send a copy of all evidence documents submitted by the petitioner to the respondent within the statutory deadline. The respondent shall examine such evidence documents within 30 days of receipt.
Section 24 All parties shall organize, number, and list their evidence documents and provide a signed and sealed description of each document’s origin and the facts it shows.
The Board shall verify the submitted documentation against the provided list, and the responsible person shall sign a return receipt and record the submission date.
Section 25 All parties shall promptly notify the Board of any changes to details such as their name or correspondence address and shall submit supporting documentation verifying such changes.
Section 26 If a trademark is under assignment or transfer during trademark trial and appeal proceedings, the assignee or successor shall promptly submit a written declaration of its legal status to participate in subsequent proceedings and be bound by the adjudication results.
If no written declaration is filed, the Board may nonetheless recognize the assignee or successor as a party in the proceedings and proceed with the trademark adjudication, provided doing so does not hinder the adjudication.
Chapter 3 Adjudication
Section 27 The Board shall adjudicate trademark trial and appeal matters by a panel of judges. However, a single panel member may adjudicate under the following circumstances:
(a) All conflicts in matters solely pertaining to conflicts with the prior trademark rights provided in §§30-31 are resolved at the time of adjudication;
(b) The trademark subject to a cancellation or invalidation petition is no longer enforceable;
(c) Where the matter must be resolved under §32 of these Rules;
(d) Other matters eligible for adjudication by a single panel member.
Section 28 If any party or party in interest files a request for recusal against a panel member under §7 of the Administrative Regulations and these Rules, that panel member shall stop participating in the adjudication until the Board issues a decision on the recusal.
A recusal request submitted by a party or party in interest after the Board has made a decision or ruling shall not affect the validity of such decision or ruling. However, the Board shall act in accordance with the law if recusal is warranted due to prevailing circumstances.
Section 29 The Board shall adjudicate trademark trial and appeal matters pursuant to §52, §53, §54, §55, and §56 of the Administrative Regulations.
Section 30 The Board shall convene a new panel to hear matters in which the original opposer petitions to invalidate a trademark that was initially rejected but subsequently approved on trial.
Section 31 The Board may stay adjudication as necessary in matters requiring the resolution of prior user rights, pursuant to §35(d), §45(c) of the China Trademark Act, and §11(e) of the Administrative Regulations.
Section 32 Trials and appeal cases may be closed in the event of the following:
(a) No successor exists following the petitioner’s death or disqualification from the proceedings, or the successor expressly abandons its right to trial and appeal.
(b) The petitioner withdraws their petition;
(c) The parties reach a settlement either independently or through mediation;
(d) Anything else requiring the adjudication be ended.
The Board shall provide written notice if it closes the case, with reasons provided.
Section 33 The panel of judges adjudicating the matter shall prepare and ensure that all members sign the transcripts of the adjudication. Any dissenting opinions among panel members shall be accurately recorded in the transcripts.
The Board shall issue legal decisions and rulings for trials and appeals.
Section 34 Every decision or ruling made by the Board shall detail:
(a) The petition for adjudication, including the facts, reasons, and evidence;
(b) The facts, reasons, and legal bases for the determination;
(c) The specific decision or ruling reached;
(d) Any applicable follow-up procedures available to the parties and their deadlines;
(e) The date on which the decision or ruling was made.
All decisions and rulings made shall be signed by all panel members and stamped with the Board seal.
Section 35 If a party is not satisfied with a decision or ruling made by the Board and chooses to file an appeal with a court, they shall either provide the Board with a copy of the appeal or notify the Board of the appeal in writing no later than 15 days from the time of filing.
Decisions other than preliminary determinations or final decisions on registration made by the Board shall be forwarded to the Trademark Office for enforcement if the Board does not receive the court summons, a copy of the appeal, or a written notice of the appeal from the party within four months of the Board issuing its decision.
Decisions and rulings shall also be forwarded to the Trademark Office for enforcement if the Board does not receive the court summons within four months of receiving a copy of the appeal or written notice of the appeal from the party.
Section 36 If a trademark cited in a decision or ruling loses its prior rights during first instance administrative litigation and the facts or legal basis on which such decision or ruling was made change, the Board may withdraw its decision or ruling and issue a revised one based on the updated facts and legal basis, provided the appellant withdraws its initial appeal.
The Board may also require a party to correct minor errors in its decision or ruling, such as typographical errors, after issuing such to the interested parties.
Section 37 The Board shall promptly convene a new panel of judges, complete adjudication, and issue a revised decision if a court overturns the initial decision or ruling.
The Board shall not accept new petitions or legal bases in retrial proceedings. However, it shall consider additional evidence that could substantially affect the outcome and serve notice upon the other party to provide the opportunity to challenge such evidence.
Chapter 4 Rules of Evidence
Section 38 A party is required to provide evidence in support of the facts in their claims or to rebut facts in claims made by the other party.
Acceptable evidence includes documentation, physical evidence, audio or visual recordings, electronic data, witness testimonies, expert opinions, and party statements.
Failure to provide any evidence or sufficient evidence will prejudice the case of the party with the burden of proof.
Except as otherwise required by the Board, there is no burden of proof as to facts admitted by the other party.
Stipulations made by an authorized agent during proceedings are construed as the party’s admissions, except where a prejudicial admission is made without specific authorization.
Section 39 A party is not required to provide evidence for:
(a) Common knowledge;
(b) Natural law and theorems;
(c) Facts deducible from laws, common knowledge, and ordinary experience;
(d) Facts established by legally binding court decisions;
(e) Facts established by valid arbitral awards;
(f) Facts certified by notarized documents.
Items (a), (c), (d), (e), and (f) shall not apply when rebutted by sufficient contrary evidence.
Section 40 A party shall provide original documents, including the primary documents and certified copies, when submitting evidence to the Board. Copies, photographs, or excerpts may be provided if the original documents are unavailable, provided that the party submitting evidence indicates the sources and the materials have been verified and sealed by the appropriate agency.
A party submitting physical evidence shall provide the originals. If producing originals proves impractical, a party may provide copies, photos, or videos as evidence. A representative sample may be provided where large quantities or multiple varieties of items are involved.
A party submitting evidence must provide or produce original or notarized copies of if the other party contests the documentary or physical evidence, or any copies, photos, or videos thereof, or if deemed necessary by the Board.
Section 41 Evidence taken from outside China, or taken from Hong Kong, Macao, or Taiwan, shall be subject to notarization and certification pursuant to law if its authenticity is rebutted by evidence submitted by the other party or if deemed necessary by the Board.
Section 42 A party submitting evidence to the Board shall include Chinese translations of all foreign-language documents or information provided. Any foreign-language materials submitted without a Chinese translation shall not be recognized.
A party disputing a translation shall submit their own translation of the disputed sections. If necessary, either party may hire a mutually recognized organization to provide a translation of the entire document or of the relevant or disputed sections.
The Board may appoint a professional translation service to translate the entire document, or the relevant or disputed sections should disagreements about a translation persist. Each party shall pay 50% of the translation costs, and a party’s refusal to pay shall be deemed their acceptance of the translation provided by the other party.
Section 43 The evidentiary weight of each item of evidence and its probative value shall be determined based on:
(a) The authenticity of the evidence, whether it is an original, and whether any copies match the original.
(b) The relevance of the evidence to the facts of the matter;
(c) The validity of the evidence type and its source;
(d) The authenticity of the evidence;
(e) Whether there is any potential bias from the witness or evidence provider towards the parties.
Section 44 A panel member shall weigh all of the evidence to determine its relevance to the facts of the matter and its relationship to other evidence.
Evidence for facts a respondent has not been given the opportunity to dispute will not be admitted.
Section 45 The following types of evidence cannot be used alone to conclusively determine the facts of a matter:
(a) Testimony from minors inappropriate for their age or mental capacity;
(b) Testimony favoring a party by a witness who is a relative, affiliate, or in a close relationship, or testimony against a party by a witness who has a personal or professional conflict with the party;
(c) Testimony from witnesses who fail to attend the oral hearing without a legitimate reason;
(d) Audiovisual materials difficult to verify as unaltered;
(e) Copies or reproductions that cannot be checked against original documents or items;
(f) Altered documentation not admitted by the opposing party;
(g) Any other documentation that, by itself, cannot be used to establish the facts.
Section 46 The Board shall uphold the probative value of the following types of evidence if admitted by one party and contested by the other, with no sufficient evidence to the contrary:
(a) Primary evidence documents or authenticated photocopies, photographs, certified copies, and excerpts;
(b) Original physical evidence or authenticated copies, photographs, or videos;
(c) Lawfully obtained audiovisual materials corroborated by incontrovertible evidence, or authenticated copies thereof.
Section 47 If a party does not present sufficient contrary evidence and reasoning to refute expert forensic opinion issued by an expert organization appointed by the other party, the Board shall recognize its probative value.
Section 48 The Board shall uphold the probative value of evidence admitted by a party if the facts are admitted by the other party or if the evidence is not sufficiently challenged.
The Board shall uphold the probative value of counter-evidence submitted by a party that is recognized by the other party.
Section 49 In the event that both parties to a matter submit conflicting evidence regarding the same fact and neither party presents a dispositive argument to dismiss the other’s evidence, the Board shall admit the evidence it determines to have greater probative value to the specific matter.
The Board shall rule based on the burden of proof if the evidence admitted does not conclusively resolve disputed facts.
Section 50 During the adjudication, the Board shall accept admissions of wrongdoing recognized by the parties in their petitions, defenses, and statements, as well as statements made by agents on their behalf, unless the parties withdraw their admission, and compelling contrary evidence is provided.
Section 51 The Board shall determine the probative value of multiple items of evidence based on the following principles:
(a) Official documents from national or other jurisdictional agencies take precedence over other documentary evidence;
(b) Forensic office findings, archival records, and notarized or registered documents take precedence over other document types, audiovisual materials, and witness testimony;
(c) Original documents or physical evidence take precedence over copies or reproductions;
(d) Expert opinions from the statutory forensics office take precedence over those from other sources;
(e) Original evidence takes precedence over hearsay;
(f) Testimonies from unbiased witnesses take precedence over those from witnesses who are relatives of or have other close relationships with the parties;
(g) Witness testimonies presented during oral hearings take precedence over testimonies from witnesses not present during such hearings;
(h) Multiple items of evidence relevant to the same fact take precedence over a single item of evidence.
Chapter 5 Time Limits and Service of Process
Section 52 Time limits include statutory deadlines and deadlines specified by the Board. Time limits shall be determined pursuant to §12 of the Administrative Regulations.
Section 53 The delivery date for hand-delivered materials from the parties to the Board shall be the submission date, and the postmarked date shall control for deliveries sent via postal services. If the postmark is illegible or absent, the Board’s receipt date will be recorded as the submission date, unless the parties provide evidence of the actual postmark date. For materials sent by courier services other than China Post, the pickup date recorded by the courier service shall be recorded as the submission date. If the pickup date is uncertain, the Board’s receipt date shall control, unless the parties prove the actual pickup date with evidence. The delivery date for data message submissions shall be subject to the date recorded in the Board’s electronic submission system.
Parties shall send all documents to the Board via certified mail with return receipt requested.
All delivery to the Board must include the trademark application or registration number and the name of the applicant. Unless a party provides evidence of errors in the Board’s archive or database records, the Board’s physical records shall control in the event of any discrepancies between written submissions and the Board’s records, and the Board’s online database records shall control for data message submissions.
Section 54 Documents from the Board may be served by mail, hand delivery, data message, or other acceptable manner. The documents may be sent to the parties via data message upon receiving their prior consent. Documents served on an authorized trademark agent shall be deemed as having been served on the authorizing party.
The official service date for documents mailed by the Board shall be the receipt date recorded by the postal service. If the receipt date is unclear or missing, the documents shall be deemed served fifteen days after mailing, unless the parties prove the actual receipt date. The date of service for hand delivered documents shall be the delivery date. Documents sent via data messages shall be deemed served on the party fifteen days after the date they are sent. Documents that cannot be served by any of the above methods shall be served on the party via public notice and deemed served thirty days after such notice is issued.
If documents mailed to a party are returned as undeliverable, the Board shall serve all subsequent documents via public notice unless the party updates their mailing address.
Section 55 If the respondent or opposer in a trademark adjudication is a foreign individual or entity lacking a permanent domicile or place of business in China, the Board shall send all legal documents to the domestic agent listed on the trademark application form pursuant to §5(c) of the Administrative Regulations, and such documents shall be deemed as served on the party when served on the agent.
The Board shall serve all legal documents relevant to the adjudication to the trademark service provider last managing the trademark matters or last involved in the Trademark Office’s ex parte examination if no domestic agent can be identified. The service provider shall be obligated to accept and forward these documents to the party involved in the adjudication. In the event a trademark service provider has terminated its relationship with the foreign party prior to the service of legal documents, it shall be obligated to notify the Board of such in writing and shall return all legal documents received within ten days to the Board. The Board will then use alternative methods of service.
Proof of receipt of documents forwarded by the International Office must be submitted for adjudications involving trademarks registered under the Madrid system. A written explanation shall be provided for any failure to provide such proof of service, and such documents shall be deemed served fifteen days after their issuance by the International Office.
Documents that cannot be served by any of the above methods shall be served via public notice.
Chapter 6 Miscellaneous
Section 56 Government employees involved in trademark adjudications found to have engaged in negligence, abuse of power, misconduct for personal gain, unlawful processing of adjudication matters, or soliciting bribes and other improper benefits from parties to adjudications shall be penalized by law.
Section 57 The Board shall commence adjudications for appeals against decisions by the Trademark Office filed before May 1, 2014 (including May 1) under the amended China Trademark Act effective after this date.
Adjudications of oppositions to Trademark Office decisions filed before May 1, 2014, shall commence after this date under the standards for legal capacity set forth in the older China Trademark Act, and the amended Act shall govern procedural and other substantive matters.
For oppositions or requests to withdraw appeals filed by May 1, 2024, the Board shall commence adjudicating oppositions to a registered trademark or requests to withdraw an appeal of trademark registration after that date. Procedural matters shall be governed by the amended China Trademark Act, while substantive matters shall be governed by the Act prior to the amendment.
The adjudication period for matters filed with the Board before May 1, 2014, shall commence on May 1, 2014.
Section 58 The Board shall specify and issue notice of the required formats for documents submitted in trademark matters.
Section 59 These Rules shall be subject to the interpretation of the Administration for Industry and Commerce.
Section 60 These Rules shall take effect on June 1, 2014.