Legislation & Policy

Notice Regarding Potential Pre-action Mediation of Administrative Appeals in China

SIPS Knowledge, Legislation and Policy

In August, the Beijing IP Court (BIPC) issued a Notice (available here) that provides for potential pre-action mediation of administrative appeal cases involving application appeals. Depending on how it is implemented, it may well help to reduce costs and the time required for such cases.

Such mediations take place between the applicant and the Trademark Review and Adjudication Division, and ideally will provide a means of suspending review of the mediated cases until co-pending disputes or appeals are finally decided.

Regrettably, it appears the BIPC still requires that non-Chinese applicants present a legalized POA package before it will consider proposing mediation.

The BIPC gave the following examples of conditions under which BIPC may allow mediations:

  1. The case turns only on the status of the cited mark and the parties acknowledge the determination of the status; and
  2. The determination of the facts in a case is not sufficiently comprehensive, causing a party to file a lawsuit. Once the facts can be determined, the case can be swiftly resolved.

In practice, typical cases that generally meet these conditions include cases where:

  1. The cited mark has been cancelled for non-use, invalidation or opposition or is pending cancellation;
  2. The cited mark and the applied-for mark effectively belong to the same proprietor (and an assignment is presumably in progress); and
  3. A co-existence agreement has been provided.

Media reports indicate that the BIPC will issue implementing rules in due course to further clarify the types of cases that it views as eligible for notices to mediate.  The BIPC has reportedly issued around 300 such notices thus far.