New Requirements for Foreign Companies filing Trademark Appeals in China
The Beijing IP Court has exclusive jurisdiction over appeals concerning rejection and invalidation of trademarks in China. To initiate an appeal to this Court, foreign companies must provide a notarized and legalized power of attorney and a legalized certificate of good standing of the foreign company. Until recently, it was an accepted practice to have the Chairperson of the Board sign such documents. But recent cases show that the practice of the Beijing IP Court has changed, and more formal requirements appear to be necessary to lodge an appeal successfully.
In recent administrative proceedings concerning the appeal of trademark rejection or invalidation decisions, the Beijing IP Court has indicated the appeal would likely be rejected if the appellant did not provide legalized evidence – such as the company Bylaws or relevant laws and statutes – to show the signatory’s power to sign the documents. This new procedural standard presents a challenge to the right holder and risks rejection of these kind of appeals.
Firstly, there is a timing issue. A trademark appeal must be filed within three months from the notification of the rejection or invalidation decision to the right holder. A few weeks is needed to respond to the request of the IP Court and to provide the required supplemental evidence in legalized form, so it is possible the filings may not arrive in time. The Beijing Court has refused to accept evidence scanned and sent to the court via email on the last valid day, and has refused to provide even a few days’ extension of time to provide such evidence.
Secondly, there is an evidentiary issue. In some cases, there are no express minutes or board decisions or bylaws directly addressing the power of the chairman or other members of the board to sign Power of attorneys on behalf of the whole Board. In this case, an appeal may not be possible. In other cases, there will be general provisions in the company Bylaws providing power to execute legal instruments, but these may not be sufficient. As a result, and considering the very high degree of discretion of the Chinese judges, the risk of rejection of an appeal is now high.
The change in the practice by the Beijing IP Court has not been announced or publicized in any form, and seems to be the result of an internal administrative policy change. In view of this change, companies may want to consider amending their Bylaws or adopting a Board decision that specifically empowers individual members of the Board, or the Chairperson, to sign power of attorney documents on behalf of the Board. Such action may help ensure that companies are able to make appeals to the Beijing IP Court.