In response to the rapid increase in the number of trademark prosecution administrative review cases (appeals from the Trademark Office – CNIPA), the Supreme People’s Court issued a Judicial Opinion on “Promoting the Reform of Administrative Litigation Proceedings by Dividing Complicated Cases and Simple Cases ” (the “Opinion”) in May 2021. The Opinion aimed to optimize the allocation of judicial resources and improve judicial efficiency. According to statistics, the average annual growth rate of intellectual property cases in Beijing exceeded 30% from 2016 to 2020, and Beijing judges each now close more than 300 cases per year, ranking first in China.
The Beijing IP Court has been streamlining the procedure for trademark appeal cases since August 2021, and it is reported that the Court has already directed more than 300 trademark prosecution cases into pre-hearing mediations between the applicant and the Trademark Office. The pilot program is currently only applicable to trademark refusal review cases, i.e. where the trademark applicant is the plaintiff and the Trademark Office is the defendant. The Beijing IP Court plans to expand the pilot at a later stage.
The Beijing IP Court sets out three types of cases that are suitable for mediation:
- those cases that can be concluded since the status of a cited trademark is now determined (ie. if the cited mark has since been cancelled, so that it no longer blocks the later application);
- those cases that can be resolved quickly once the facts can be “fixed” –the party may have filed the lawsuit because it does not agree with the examiner’s finding of relevant facts;
- those administrative cases that can be resolved simultaneously in mediation with related civil cases, so that the ‘quality and effectiveness of justice can be greatly enhanced’.
Introducing mediation into trade mark administrative litigation should definitely help to optimise limited judicial resources. In civil litigation, mediation has been widely used and has played an important role in the separation of complicated from simple cases. The number of trademark administrative cases currently account for more than 70% of all administrative cases handled by the Beijing Intellectual Property Court. Unlike patent administrative cases, trademark administrative cases rarely involve technical factors, and are relatively less complicated compared to patent cases. That said, the previous “unified approach” for administrative reviews does not differentiate trade mark/patent cases, i.e. even a simple trademark administrative case still needs to undergo complex litigation procedures.
Furthermore, in a lot of trade mark administrative cases, the appeal to Court often has to be filed simply to keep the trade mark application alive pending the outcome of an invalidation/cancellation of a cited mark, or awaiting a formal consent from a cited mark owner. The CNIPA does not usually entertain requests for suspension therefore the only way to keep the application alive is to file an appeal, which can be quite expensive given that no legal arguments need to be submitted. Since conducting a mediation is not included in the administrative litigation trial period, the trademark applicant can also buy more time to resolve the matter. This simple measure should certainly help trade mark applicants to reduce costs for prosecuting trade marks in China in future.