Trade name right, also called enterprise name right, is a kind of industrial property entitling an enterprise to exclusively use its own trade name in a certain territory. China does not have a special law for this right, but provides some regulations in General Principles of the Civil Law, the Anti-unfair Competition Law, the Provisions on Administration of Enterprise Name Registration, and the Trademark Law, etc.
Article 32 of the current Chinese Trademark Law stipulates that, the trademark applications shall not infringe upon another party’s existing prior rights. The “prior rights” here include trade name right. According to the Examination Standards of Trademark, where a trademark is identical with or similar to a trade name that is already registered or used by another party and has certain influence, and the registration of the trademark is liable to create confusion to the public and damage the interest of the owner of the prior trade name, such registration shall be deemed as infringement upon other’s trade name right and shall not be approved.
Applicable conditions for using prior trade name against later trademark
- The registration or use date of the trade name shall be earlier than the application date of the trademark. The facts of this earlier could be proved by trading documents, advertisement materials, etc. for foreign enterprises.
- The trade name shall have certain influence in the related public of China. In determining whether a trade name has certain influence, its registration date, the time period for using this name, the regions for the use, the business performance of the user, the advertisements, etc. could be considered.
- The use and registration of the applied trademark is liable to create confusion, and the interest of the trade name owner is likely to be damaged. The confusion here refers to the registration and use of the later filed trademark on its goods/services will mislead the related public in taking for the goods/services are from the trade name owner, or have associated or license relations with the trade name owner. The confusion and the likelihood of damage shall consider the following factors:
- Distinctiveness of the mark. If the mark is a fabricated word, not used often and has no specific meaning, it shall be determined as distinctive.
- The influence of the prior trade name.
- The goods/service of the trademark principally shall be similar to those provided by the trade name owner.
Multi-class protection for trade name
Generally, the protection for prior trade name is limited to identical or similar goods. But modern enterprises gradually have diversified developments, especially the big companies with cross-cutting, multisectoral operations, so when the trade name is highly famous, the later mark is very close to the trade name and the trademark applicant has obvious bad faith in filing the trademark application, the protection scope for trade name shall not be too narrow, but be extended to other related goods/services which might also be confused by the public and cause damages to the owner of the trade name.
Protection for abbreviation of the trade name
If the evidences on file could prove that the abbreviation of the trade name has been well known by the related public, obtained pretty high reputation in the related industries, and created the meaning of commercial symbol to distinguish the enterprise, such abbreviation could be protected as prior trade name.