A registered trademark is a trademark that has been registered at China Trademark Office, and an unregistered trademark is a trademark that has not been registered. The Trademark Law of the People’s Republic of China mainly adopts the “first-to-file” principle, which grants exclusive trademark right to the registrant who applies first in China, and the Trademark Law gives a certain degree of protection to unregistered trademarks. This paper is a brief to help understand the relevant articles of China Trademark Law applied in opposition/invalidation actions in protecting unregistered trademark in China.
When a trademark owner / real user (petitioner) discovers that their trademark has been applied for or registered by another party while the said petitioner does not applied for or registered their owner trademark earlier in China, they may raise opposition/invalidation action against the published/registered trademark mainly based on Articles 7, 13, 15 and 32.
Article 7 introduces the principle on good faith for trademark use and registration; Article 13 protects unregistered trademarks which have been recognized as well-known trademarks in China; Article 15 prohibits the distributors, agents, and those who have business contacts with the brand owners to register the same or similar trademark over same/similar goods/services; and Article 32 prohibits preemptive registration of trademarks in bad-faith which had earlier use and high reputation by other parties, and those which are conflict with third party’s other existing right rather than trademark right, such as copyright, name right, etc..
The Article 7:
The Article 7 in the amended China Trademark Law which came into force since May 1, 2014 states that “The principle of honest and trustworthy should be followed when trademark is used and filed for registration”.
This newly added article is useful to restrain trademark squatting in bad faith, because this article may be used as a safeguard to those bad faith registrations which cannot be stopped by other specific grounds set in the current law. While this article could not be claimed independantly but only claimed together with other grounds.
Article 15 of China Trademark Law: A trademark shall not be registered and its use shall be prohibited if the agent or representative of the person who is the owner of a trademark applies, without authorization, for the registration of the trademark in his own name and if the owner raises an opposition
Where a trademark for which a registration is applied is identical or similar to an early used trademark of another party that is not registered, in respect of the same or similar goods, and where the applicant being of contract, business or other relationship except the relationship referred to in the preceding paragraph, is fully aware of the existence of the trademark owned by the other party, the trademark shall not be registered, if the other party raises an opposition.
If using the article 15.1, the petitioner needs to prove that (a) there was agent or representative relationship between itself and the applicant or registrant of the similar/identical trademark prior to the filing date of the trademark; and (b) the petitioner is indeed the real and original creator and user of the trademark, then this ground could be supported.
If it is difficult to prove the agent or representative relationship between the parties, but the petitioner could prove contract, business or other relationship, the ground of the opposition/invalidation action could be based on article 15.2. While, this ground only applies to similar trademark on similar goods/services.
Article 32 of China Trademark Law states that “an application for trademark registration shall not prejudice any pre-existing rights of others; nor shall any party be permitted to preemptively register a trademark which is used by another person and enjoys certain reputation with any improper means”
As for first part of Article 32, such prior right over the trademark or commercial sign includes copyright, prior name right, trade name right, patent right, etc.. The conflict between trademark and prior copyright are very common in practice.
The symbol mark or mark containing distinctive device can be protected by copyright law. If there is a conflict of rights between the trademark and the copyright in practice, the earlier right would prevail, which means that if the creation date of the work under copyright is earlier than the filing date of the trademark application, the copyright owner is entitled to claim prior right against the trademark application/registration. If the petitioner can prove that (a) the petitioner enjoyed prior copyright; and (b) the similar trademark filed by others creates prejudice to such prior right, such ground could be supported by authority. To establish such copyright in China, the following documents are usually considered useful: 1) copyright recordal certificate (not compulsory but very important as prima facie evidence); 2) contract with author or design company; 3) script when designing the works; 4) first publication proof.
As for second part of Article 32, if the petitioner wants to cancel the trademark preemptively registered by others, they should provide evidence to meet the conditions: (a) the preemptive registrant registered the trademark using “improper means”; (b) the trademark “has already been used” by the owner of the unregistered trademark; and, (c) the use of the trademark has reached a certain extent of reputation and influence among the relevant public. Furthermore, the trademark which has been used by others and has a demonstrable influence is just limited to trademark which is identical to the preemptive registered trademark on the same/similar goods/services. If the bad-faith of the preemptive registrant is obvious, then the requirement of the public awareness of the unregistered trademark will be relatively lower.
Article 13.2 of China Trademark Law: Where a trademark in respect of which the application for registration is filed for use for identical or similar goods is a reproduction, imitation or translation of another person's trademark not registered in China and likely to cause confusion, it shall be rejected for registration and prohibited from use.
The owner of a well-known trademark can prohibit others to use their mark in connection with dissimilar goods or services, provided that: 1) use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark, and provided that the interests of the owner of the registered trademark are likely to be damaged by such use; or 2) such use shall diminish the uniqueness of the well-known trademark, or whittle away or dilute the strong distinctiveness of the well-known trademark.
The threshold to recognize a well-known trademark is very high, and the examination process involves a comprehensive consideration of various factors.
The above is a rather brief outline of the possible legal grounds for the protection of unregistered trademarks and other commercial signs in opposition and invalidation actions in China. However, in each specific case, there will be skills and strategies to manage between the possible legal grounds and the available evidence, and the grounds could be based on several articles set out above.