Procedural Issues in the Case of Reexamination of Rejection of ENVACAR Trademark

 
               William Yang

  On 3 September 2001 , the applicant , the US Pfizer products inc.,filed an application with the Trademark office of the State Administration for Industry and Commerce (the Trademark office for short) for registration of the English trademark " ENVACAR " in the goods of class 5" preparations for pharmaceutical purposes , medicines for human purposes , and veterinary preparations" .On 10 October 2002 , the Trademark office rejected the application on the ground that"the trademark , translated into Chinese , is the generic name of Guanoxan Sulfate , which is an anti-high-blood-pressure medicine .

  Dissatisfied with the rejection decision, the applicant applied, on 29 October 2002, to the Trademark Review and Adjudication Board (TRAB) for reexamination. The TRAB made, on 1 September 2004, a decision to have upheld the Trademark office's rejection, in which the TRAB held that the "trademark ‘ENVACAR', at issue is to be used in preparations for pharmaceutical purposes. The term ‘ENVACAR' was defined as the generic name of "Guanoxan Sulfate" , which defined as an anti-high-blood-pressure medicine in the Modern English-Chinese Glossary of Drugs ( as published by the People's Health Publishing House ,2nd Edition , P . 430 ) , which shows that the trademark ‘ENVACAR' is the generic name for an anti-high-blood-pressure medicine , and should not be registered as a trademark " .

  This writer will be examining the procedural issues and their relevant law principles involved in the two decisions, hoping to draw attention from the IP community, and to improve the quality of, and standards for, trademark examination in China, in an attempt to reduce subjectivity in the course of trademark examination.

Ⅰ: Should the administrative decision made by the Trademark Office without evidence be directly determined as invalid and revoked pursuant to law?

  NO mention has been made in the Trademark Office's rejection of the facts on which the trademark ENVACAR has been rejected.

  It is not expressly provided in the Trademark Law and the Regulations for the Implementation of the Trademark Law on whether the Trademark office should present factual evidence on which its decision is made, 1 nor were such provisions set forth in the former trademark law and regulations. In practice. to this writer's knowledge , the Trademark office normally does not present factual evidence on which a rejection decision is made pursuant to Article 11 (1) of the Trademark Law "...consist exclusively of generic names , designs or models of the goods " . 2

  However, taking facts as the basis and taking law as the criterion , which are the fundamental requirements all the Chinese administrative and judicial authorities should observe when making administrative and judicial decisions , have long been clearly set forth in the Chinese Procedure Law and other administrative laws and regulations . For example , Article3 , paragraph two of the Administrative Penalty Law provides that"administrative penalty that is not imposed in accordance with law or in compliance with legal procedures shall be invalid " ; Article 4 of the Administrative Procedure Law provides that "in conducting Administrative Proceedings, the people's courts shall base themselves on facts and take law as the criterion ". Besides , Rule 4 of the Trademark Review and Adjudication Rules also provides that " the Trademark Review and Adjudication Board shall base itself on facts and take law as the criterion when hearing cases of trademark dispute " Rule 42 provides that " in the decision or adjudication the Trademark Review and Adjudication Board shall be indicated the facts ascertained , reasons and grounds for the application of law in the decision or adjudication ".

  Whether a trademark is registrable has a bearing on the applicant's substantive right. Any decision made by the Trademark office having a bearing on the applicant's statutory right should , besides being procedurally due , be based on sufficient facts and Law , and the evidence should be clearly presented , otherwise , the legality and impartiality of the decision are inevitably affected . In this connection, many national trademark laws and trademark examination standards contain express provisions. For example, it is provided in §1209 . 01 (c) (i) of the US Trademark Manual of Examination Procedure that the examining attorney has the burden of proving that a term is generic by clear evidence .

  Article 28 (3) of the Chinese Administrative Reconsideration Law provides that if a specific administrative action is taken in the circumstance where the main facts are not clear and essential evidence is inadequate , a decision shall be made to have it nullified or changed or confirm that it is illegal . Accordingly , this writer believes that if a decision made by the Trademark office , primarilyresponsible for the trademark registration nationwide , is not based on sufficient facts , it is obviously undue , and should be nullified and revoked un-der the law .

Ⅱ : Should the TRAB make a decision on the basis of new evidence in the trademark reexamination proceedings?

  Rule 35 of the Trademark Review and Adjudication Rules provides that"in hearing a case of reexamination applied for out of dissatisfaction with a decision made by the Trademark Office on the rejection of trademark registration , the Trademark Review and Adjudication Board shall review and adjudicate the rejection decision made by the Trade- mark office , the facts of , grounds on and requests for the reexamination application by the applicant and the factual situation in the course of review and adjudication " .


  Like the case with the administrative reconsideration proceedings , the trademark reexamination proceedings have been crested to rectify procedural or substantive errors or undue practice likely to occur in a decision made by the Trademark office , to protect the applicant's lawful rights and interests , and to ensure and supervise the Trademark office's exercise of its trademark examination power under the Law.


  For that matter , this writer is of the view that the TRAB should not accept or introduce new evidence on its own initiative when conducting reexamination .if the TRAB takes initiatives to look for new evidence and makes a decision on the basis thereof , it would not only violates the said provision , but also cause a series of problems : (1) the TRAB 's action goes beyond the scope of reexamination , and it is performing the function for the Trademark Office ; and (2) its action runs counter to the aim for which the trademark reexamination system has been created . Besides, since the TRAB, after finding new factual evidence, does not give an interested party any chance to make his / its observations, and directly makes its decision, it has deprived the interested party of his / its right to defend himself/ itself regarding the new evidence.

  Although, under the current trademark law , any interested party , if dissatisfied with the TRAB's decision , may bring an action in the people's court to request judicial review of the decision , it takes at lest three months for the people ' s court to hear an administrative case of the nature , and takes at least two months longer for it to be through with the trial of second instance. Initiation of the follow-up procedure increases the interested party's burden and costs, and a large number of lawsuit instituted in the court will inevitably increases the court's workload, which would render, to a certain degree, a waste of the public resources.

Ⅲ: Is the examination authority obliged to examine and ascertain evidence?


  In the present case , the Trademark Office does not in its decision present any evidence , and the TRAB and the applicant furnishes diametrically different evidence regarding whether "ENVACAR" is a generic name of the goods . In the Modern English-Chinese Medicine Glossary as consulted by the examiner of the TRAB , the " ENVACAR"trademark is defined as the generic name of " Guanoxan Sulfate " , which is an anti-high-blood-pressure medicine , while in the Dictionary of Foreign Pharmaceutical Goods presented by the applicant , it is expressly defined as a trademark used by the Pfizer in " GUan0Xan Sulfate " .

  TO this writer's knowledge , the examiners of the TRAB normally first consult a dictionary or reference book ( they often use King soft Ciba , a electronic dictionary ) when deciding on "generic names of goods" . They would make their decisions to this effect if some relevant information can be found in just one such book.However, have they performed the obligation to examine and ascertain their evidence by making a conclusion just from one book? For this writer, they have not because what are contained in a dictionary or any other reference book, be it the King soft's Ciba or something else, is not necessarily any information that is statutory or confirmed authoritative definitions. The chances are that there are improper, and even erroneous explanations, and their authenticity and validity require further examination and confirmation. For that matter, this writer takes the view that as for those trademarks that cannot be obviously determined as generic names, the examiners should consult at least two or more dictionaries or other reference books before drawing the conclusion. In the presence of apparently disputable or conflicting evidence, they should give the interested parties a chance to cross-examine such information.


Recommendations


  To address the issues discussed above, it is necessary to revise and improve the relevant laws and regulations. To this end, this writer would like to make the recommendations as to the following:

  1. It should be expressly provided in the current laws and regulations that the trademark examiners are required to present the factual evidence and law basis in the examination decision on which decisions are made. To this end , provision to this effect should be added to the Guidelines for Trademark Examination now being drafted , and to the Trademark Law and the Regulations for the Implementation of the Trademark Law when they are revised in the future ; and

  2 .It should be further explicated that, in the trademark reexamination, the TRAB should conduct examination and confirmation in relation to the Trademark Office's decision and on the basis of the factual evidence the applicant furnishes together with his / its reexamination request, and ghoul not look for new evidence on its own initiative.

 

 

1.Article 22 of the Regulations for the implementation of the trademark law provides that "...the application that is not in compliance with the provisions and the applicant for the registration of a trademark used on some of the designated goods that is not in compliance with the provisions shall be refused, the applicant shall be notified in writing and the reasons therefore shall be given " It cannot be seen from this provision that the competent administrative authority making a decision is legally obliged to explain the factual evidence.

2 It has been discovered that when examination involves the above issues, some examiners search for relevant information or evidence. But under most circumstances, the searched evidence is not indicated in their examination decision; hence in the Trademark Office's decisions is seldom mentioned the evidence on which their decisions are made . 

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