Date: May 3, 2016

Back in 2012, CTMO announced “Notice Concerning Applications for Newly Added Retail or Wholesale Service” to cope with the execution of “Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks”. Article 4 in the CTMO’s Notice stipulated an interim period from January 1, 2013 to January 31, 2013, and applications filed within this interim period claiming the newly added services shall be considered as being filed on the same day.

Huayuan Medicines filed its trademark application in Class 35 on January 4, 2013, the first working day after the newly added service mark notice becomes accepted. Right after this, another two companies filed respective applications for a similar trademark within the interim period. CTMO issued “notice of negotiation concerning applications filed on the same day” on October 23, 2014 to three parties, asking them to decide whose application shall stay by negotiation or by a draw if they cannot reach an agreement. Huayuan Medicines, upon receipt of the CTMO notice, filed an administrative suit before Beijing IP Court and requested cancellation of the notice.

Beijing IP Court believed the “interim period” stated in Article 4 of CTMO’s has modified the definition of “same day” stipulated in Article 31 of the Trademark Law, which has exceeded CTMO’s authority of providing explanation on actual application of law. The court therefore ordered CTMO cancel the “notice of negotiation concerning applications filed on the same day” issued on October 23, 2014, and reexamine Huayuan Medicines ‘s trademark application.

Observation:

This is the first judicial case on the validity of the regulatory documents issued by State ministries and commissions since the implementation of the new Administrative Procedure Law. Beijing IP Court’s decision was highly regarded in the juridical circle, which will prompt the governmental organs to be more cautious and lawful while executing public power.