The pre-registration mechanism ("pre-registration") has been established for years by the Beijing Intellectual Property Court to accept intellectual property cases of the foreign, or Hong Kong, Macao and Taiwan plaintiffs. The purpose is to solve the difficulty that these plaintiffs are objectively unable to complete the notarization and legalization procedures for their identity documents before the deadlines for filing the cases. The result is that the submission time of these plaintiff’s notarized and legalized identity documents is delayed until after the filing deadline and before the pre-registration time limit.
Within the mechanism, a plaintiff will submit other complete materials and a copy of its identity documents as a pre-registration application to the court before the filing deadline. The court will examine the filed documents and order a pre-registration time limit. Then the plaintiff shall submit the notarized and legalized identity documents to the court within such time limit. The court will examine the documents and formally accept the case.
The "legalization " mentioned in this article includes legalization by the embassy and consulates and Hague apostille. On November 7, 2023, the "Convention Abolition of the Requirements for Authentication of Foreign Public Documents" came into effect in China. If the country of the plaintiff is a party to the Convention, an apostille is acceptable and no legalization is needed. However, if the plaintiff's country is not a party to the Convention, the legalization is still required.
The Beijing Intellectual Property Court adjusted this pre-registration mechanism in June 2023, expanding its scope of application. Different pre-registration terms and rectification terms were assigned to different cases, and the preliminary supporting documents to be submitted when filing pre-registration applications were specified. This article outlines such movements.
1. New scope of application
Prior to June 2023, the pre-registration mechanism for trademark administrative litigation only applied to cases of foreign or Hong Kong, Macau, or Taiwan plaintiffs. After the adjustment, the new mechanism expands to cover the following two situations for the administrative litigation of trademark refusal review:
(1) the sole reason for the case is the unstable status of the cited trademark, and the plaintiff is domestic entity or individual;
(2) the plaintiff is a foreign, or Hong Kong, Macau, or Taiwan entity or individual, and the status of the cited trademark is unstable.
2. Pre-registration term and rectification term
The various terms are assigned for different pre-registration applications.
For a regular IP case of a foreign or Hong Kong, Macau, or Taiwan plaintiff, the pre-registration term still follows the previous policy, 3 months, starting from the filing date of the pre-registration application. Within this 3-month term, the plaintiff needs to submit original notarized and apostilled/legalized identity documents, along with their Chinese translations. Such 3-month term can be extended upon request, but the cumulative extension term shall not exceed 3 months. It should be noted that if the country of the plaintiff is a party to the Convention, generally the court will no longer accept requests for extension of pre-registration term.
Where the pre-registration application is the administrative litigation case against trademark refusal review decision and based solely on the unstable status of the cited trademark, the pre-registration term is 12 months, starting from the filing date of the pre-registration application. Within this 12-month term, the plaintiff must submit documents regarding the final status of the cited trademark. No extension will be allowed for such cases.
Where the plaintiff is a foreign, or Hong Kong, Macau, or Taiwan entity or individual, and the pre-registration application is the administrative litigation case against trademark refusal review decision and based on the unstable status of the cited trademark, the pre-registration term is 12 months, starting from the filing date of the pre-registration application. Within this 12-month term, the plaintiff must submit original notarized and apostilled/legalized identity documents, along with their Chinese translations, as well as documents pertaining to the final status of the cited trademark. No extension will be allowed for such cases.
3. Preliminary supporting documents for filing a pre-registration application
The unstable status of the cited trademark refers to a situation where, before the contested decision is made (i.e., prior to the issuance date of the contested decision), the cited trademark is in an unstable state, and the final decision regarding the cited trademark is sufficient to have a substantial impact on the trial. Therefore, the following preliminary evidence is required for filing a pre-registration application.
(1) A written explanation that outlines how the cited trademark affects the conclusion of the case; and
(2) Preliminary evidence of the unstable status of the cited trademark, such as a proof for movement of the cancellation or invalidation process of the cited trademark or any other documents that can demonstrate the status of the cited trademark to be cancelled or invalidated.
Pre-registration is a procedure that takes place before the formal filing of a case. As a plaintiff, it is necessary to submit notarized and apostilled/legalized identity documents, and/or evidence of the final status of the cited trademark within the pre-registration term in order to proceed with the formal filing. Failure to complete the formal filing within the pre-registration term will be deemed as not initiating the litigation case.
The new mechanism implemented by the Beijing Intellectual Property Court objectively provides more time for the plaintiff to wait for the status of the cited trademark under examination. This reduces the chance for the parties to file an appeal solely due to the need to wait for the status of the cited trademark under examination. It not only saves judicial resources but also lowers the litigation costs for the parties involved.
If you have any questions on the article above, or need any assistance on IP matters such as patent, trademark, litigation, and protection, please feel free to contact us.
For patent related matters, please e-mail to patent@afdip.com or call us at +86 (10) 82730790. For trademark, litigation or other legal matters, please e-mail to bhtdlaw@bhtdlaw.com or call us at +86 (10) 82737958.
