On 26 March 2021, the China National Intellectual Property Administration ("CNIPA") issued a 97-page long research report and draft guideline on "Electronic Evidence Guidance in Trademark Review and Adjudication Cases" ("the Guidance"), aiming to ease burden of proof and unify examination standard on electronic evidence in trademark review and adjudication cases.
Despite the progress made in enhancing IP protection in China, brand owners are still facing many challenges in maintaining and enforcing their trademarks. Heavy burden of proof in CNIPA and in court is one of them.
Among all types of evidence, electronic evidence such as emails, online sales records, online ads, webpage printouts, search result returned by search engines, are frequently used in trademark oppositions, invalidations and cancellation proceedings (collectively called "trademark review and adjudication Cases"). Yet brand owners usually encounter difficulty in gathering electronic evidence and in satisfying authenticity requirement, given the technical complexity of the company and the potential for alteration of the text due to human interference.
The results of the research project include the recommended draft of the "Guidance", the accompanying article-by-article interpretation for each guideline and a compilation of guiding court cases and CNIPA cases.
Among these articles, Art. 9 which addresses the issue of gathering electronic evidence originated outside of China territory may be of particular interest of foreign companies. China law requires that the evidence formed or stored outside of China shall be first notarized by local notary public and then have it legalized by China Embassy in that country in order to satisfy authenticity request.
To ease the burden of proof and unify the examination standard, Art. 9 identified below 5 types of foreign electronic evidence which do not need to be notarized and legalized:
(1) Foreign electronic evidence available for Chinese public to access.
(2) The other side does not question on foreign electronic evidence"s authenticity.
(3) Other evidence can support a finding that the foreign electronic evidence is that which it is purported to be;
(4) Foreign electronic evidence in the form of webpages from a government"s official website, annual report of a listed company, prospectus, search result from professional database, search result from digital library, etc.;
(5) Foreign electronic evidence which has been accepted in China court judgements, administrative enforcement decisions and arbitration awards which already took effect.
Regarding whether the above noted Sec(1) contains the foreign electronic evidence which can be accessed only via using VPN (such as the printouts from Facebook, Instagram, etc.), the research report mentioned that gathering foreign electronic evidence via using VPN is likely to violate certain administrative regulations. But since violation of administrative regulations are not as serious as violation of mandatory provisions of law, such printouts by using VPN should be admitted as long as the proponent can establish the content of the printouts are reliable and true. However, the report also mentions that the examiners should decide admittance of such evidence in each specific case.
According to the report, CNIPA examiners should refer to the draft "Guidance" when examining electronic evidence. At the same time, the CNIPA will closely follow up on the actual situation of electronic evidence submission, collection, and examination, and gradually improve the "Guidelines" to provide a basis for the next step in formulating and publishing the official "Rules on Electronic Evidence in Trademark Review and Adjudication Cases". Parties to the trademark review and adjudication case and their agents may also refer to the draft "Guidance" when gathering and submitting electronic evidence in trademark review and adjudication cases.