Introduction

In China, trademark rejection and invalidation appeals are handled exclusively by the Beijing IP Court. Like that of many other countries, China's appeals process is fraught with ambiguity. As a result, this post will provide a variety of tried-and-true appellate tactics that will hopefully reduce the likelihood of refusal.

The process of filing an appeal

Appeal to the TRAD

- Trademark appeals are divided into three categories: objections, oppositions, and cancellations in China. First, suppose the application is denied, or the opposition or cancellation decision is unsatisfactory. In that case, the interested party may file an appeal with the Trademark Review and Adjudication Department (TRAD) within 15 days of receiving the CTO's Notification of Refusal, Decision on Opposition of Trademark, or Decision on Cancellation of Trademark.

Evidence in TRAD Actions

- In TRAD appeals, the nature of the evidence used, the purpose of the evidence, and any potential formality and/or language requirements that may drive both the means used to collect the evidence and the form in which it can or should be presented to the TRAD should all be carefully considered.

Court Appeals

- Appellate review of TRAD judgments on non-use cancellation appeals, trademark refusals, and oppositions (filed by the mark's registrant, not the opposing party), as well as appeals of TRAD rulings on invalidation petitions, are all possible subjects for judicial review. As a result, creating formality documents becomes an absolute minefield.

Major issues that arise during the appeals process

The timing issue

- A trademark appeal must be submitted within three months of the right holder receiving notice of the rejection or invalidation judgment. It will take a few weeks to answer the IP Court's order and deliver the appropriate extra material in legalized form, so the files may not come on time.

The evidential issue

- In some circumstances, there are no express minutes, board resolutions, or bylaws addressing the chairman's or other board members' authority to execute Powers of Attorney on behalf of the entire Board. In this case, an appeal may not be possible. In other circumstances, the business bylaws will contain basic provisions granting authority to execute legal instruments, but these may not be adequate.

Best advice for in-court appeals

1. Allow plenty of time to meet deadlines and formality requirements, especially when dealing with judicial appeals. For example, instead of waiting until the last minute to account for objections, such as those from Chinese consulates, begin producing those documents right now.

2. Provide scanned copies of required papers to your Chinese counsel at each level of the authentication procedure before moving on to the next to improve the chances of potential flaws being found and fixed.

During the hearing, the court will consider the legality of the TRADs administrative judgment. After reviewing the judgment, the court has three options: upholding the TRAD decision, canceling the decision, ordering the TRAD to make a new one, or upholding part of the TRAD decision and returning the matter to the TRAD for additional consideration if required.

Please contact us (inquiries@chinalawsolutions.com) to get a recommendation on a firm which can assist your business with trademarks in China. All inquiries are treated as confidential.