New Trademark Related Judicial Guidance and E-Commerce Enforcement Rule

Joe Simone at Simone Intellectual Property Services, has shared a translation of the recent Beijing Higher People’s Court Guidance on Hearing Trademark Administrative Cases (Jan. 2014).  In view of the high number of foreign-related trademark administrative appeals which are only heard in Beijing, these rules are very important to understanding relevant procedures and standards.  As I have noted in other translation postings these are unofficial translations for reference only.

Joe also provided us with a copy of the SAIC Rules on Trading on the Internet (enacted January 26 2014, with an effective date of March 15, 2014).   Unfortunately I do not yet have an English language translation of the SAIC Rules.  As a key regulatory authority for both trademarks and e-commerce, these rules are important for understanding SAIC’s role in this important area.

In case you are keeping track, this brings to five the total number of new trademark-related ‘normative documents’ in final or proposed form – the Trademark Law, the draft of the Implementing Regulations, the draft of the TRAB rules, and now these two. 

Legal “Choreography” and the Revised Draft TRAB Rules

Just as the due date for comments on the revised  Trademark Law Implementing Regulations expired on February 10, 2014, the State Council Legislative Affairs Office (SCLAO) simultaneously released proposed new Rules of the Trademark Review and Adjudication Board (TRAB) for public comment.  One translation of prior rules is found at the WIPO website.  The deadline for comments is March 11, 2014. 

Comments may be submitted to the SAIC website or the Chinese government law website for collecting comments on public comments on administrative rules.  This is a different website from the one the SCLAO maintains for public comments on State Council regulations, such as the Trademark Law Implementing Regulations.

There is some interesting legal “choreography” to all of this. 

First, the SCLAO is clearly following the order of the Law on Legislation (LoL) by soliciting comments after Trademark Law passage for the Implementing Regulations first, then the TRAB Rules.   The comments are also delivered to separate on-line accounts.    Although the close timing of the new drafts suggests that timing will be tight to comment on TRAB Rule changes that may be adopted based on new changes to the Trademark Law Implementing Regulations, it is nonetheless clear that the SCLAO and SAIC are coordinating closely to try to make the implementation of the new law as seamless as possible, thereby minimizing conflicts between inferior rules and superior regulations or the law itself.

In addition, the proposed TRAB rules, which will be implementing simultaneously with the new Trademark Law and Implementing Regulations, also seek to clarify in Article 54 when the revised rules should retroactively apply, in accordance with China’s LoL, particularly Article 84 (“Laws, administrative regulations, local regulations, autonomous regulations, separate regulations and rules shall not be retroactive, but the regulations formulated specially for the purpose of better protecting the rights and interests of citizens, legal persons and other organizations are excepted.”).  The principle of application of Article 84 to examination practices was also recently clarified by SIPO in its revised practices regarding “enablement.”   

Finally, there are some interesting developments regarding evidence that could reflect more general trends.  The TRAB is now considering electronic service including accepting electronic evidence and other materials (Art. 52).  There are also relatively extensive rules on the types of evidence that the TRAB will consider (Chapter IV: 证据规则). Considering the tight time frames for TRAB procedures, this will help in expediting case handling.  However there appears to be little consideration to the procedural formalities for evidence from overseas (legalization/consularization), which can disadvantage them when procedures have been so expedited (Art. 39).   The TRAB Rules also require Chinese language translation of documents and provide dispute resolution procedures if the parties disagree on translations (Art. 40).  Consideration is also given to whether the evidence submitted is a copy and the chain of custody for the evidence (for example, Arts. 41- 44). The TRAB will also constitute new panels on remand from the courts and new evidence can be accepted in the new panel.  This will provide an additional cross-check for more independent adjudication (Art. 35). Image

USPTO and SAIC Engagement on IP Issues

From Director’s Forum: David Kappos’ Public Blog:

On Sept 10, 2012 the USPTO was privileged to host Minister Zhou Bohua and his senior delegation from the State Administrative for Industry and Commerce of China (SAIC) of the People’s Republic of China. Minister Zhou, visited us for about four hours, as part of a stopover en route to a meeting in Brazil. This was likely the first time that a Minister from SAIC has visited USPTO. Continue reading