In the latest report from the MARQUES China Team, Shufang Zhang and Ling Zhao discuss the Guidance on Avoiding Conflicts with Prior Rights in Trade mark Registration and Use, issued by the China National Intellectual Property Administration (CNIPA) on 7 December 2022.

Aims of the Guidance

The Guidance has been issued to encourage entities to follow the principle of good faith in trade mark application and use, avoiding causing damage to other parties’ prior rights and causing confusion among the consumers.

The Guidance is made in accordance with Article 32 of the China Trademark Law, which prohibits the infringement of another party's existing prior rights. The Guidance specifies that the “prior rights” in this Guidance refer to the existing and legal rights and interests, including trade name right, copyrights, design patent right, name right, portrait right, geographical indications, name, packaging or trade dress of a product that enjoys a certain reputation. The “prior rights” do not include prior trade mark rights, which are protected through other articles of the law.

The Guidance stresses that entities shall follow the principle of good faith in trade mark registration and use. When applying for or using a trade mark, necessary searches shall be conducted to fulfil the duty of care to avoid conflicts with others’ prior rights. These searches include searching via the internet, national enterprise credit information publicity system, patent search and analysis system of the CNIPA.

The Guidance emphasises that entities shall obtain permission from prior rights holders to register and use the sign, and the use shall be within the scope of the licence. Proper use of the trade mark is also stressed, to avoid conflicting with the prior rights if the mark is stylised or altered in use.  

The Guidance lists the common situations of conflicting with prior rights in trade mark application and use, and provides criteria on judging the conflicts of rights, including the basic evidence to prove the prior rights and interests protectable under the Law.

Prior trade name right

If a trade mark applied for is identical with or similar to another party’s registered trade name or prior used trade name that has obtained a certain reputation, or similar to the abbreviation of company name that has established fixed relations with this party, and this mark is used on the same or similar goods or services, the trade mark should not be allowed for registration or use.

The distinctiveness, reputation and similarity of goods/services between the two parties are taken into consideration when deciding whether the mark applied for infringes upon the prior trade name rights.

Prior copyrights

If a trade mark applied for is the same as or substantially similar to another party’s copyrighted work that is still in the term of protection, the trade mark should not be allowed for registration or use. Materials showing the publication of the work, the creation of the work, copyrights registration certificate, and effective judgments or official decisions can be used to prove whether the party owns prior copyrights over the work.

Prior design patent right

If a trade mark applied for is similar to another party’s prior design patent that is still in the term of protection, the trade mark should not be allowed for registration or use. The mark applied for is considered to be similar to the design when either the major part or the overall appearance of the mark is similar to the design.

Prior name right

If a trade mark applied for is similar to another party’s name that has enjoyed a certain reputation and established fixed relations with this party, the trade mark should not be allowed for registration or use. The reputation of the name, the areas the name is famous for and the fields the mark applied for would be used are taken into consideration when deciding whether the mark applied for infringes the name rights of another party.

In addition, the names of martyrs, names of late famous persons, one’s own name that is similar to a famous person’s name and a famous person’s name in religious fields shall not be registered as trade marks, and filings of such trade marks would be considered in violation Article 10, 1 (7) or (8) of the Law, being deceptive, immoral or against public order with negative influence, and such trade marks are prohibited from use.

Prior portrait right

If a trade mark applied for is similar to another party’s portrait, picture, or sculpture, and permission is not obtained from this party for registering the mark, the trade mark should not be allowed for registration or use. When deciding whether the mark applied for infringes another party’s portrait right, the possible confusion regarding origin of goods or services in trade mark registration and use are taken into consideration.

The portraits of a late famous person or of a famous person in the religious field shall not be registered as trade marks, as being in violation of Article 10, 1, (7) or (8) of the Law, for being deceptive, immoral or against public order having negative influence.

Prior geographic indications

If a trade mark applied for is the same as or similar to prior geographical indications, the trade mark should not be allowed for registration or use. The reputation and distinctiveness of the geographical indications, the knowledge of the public over the geographical indications, and the bad faith of the applicant shall be taken into consideration when deciding whether the mark applied for infringes upon another party’s prior geographical indications. In practice, a trade mark identical with or similar to a geographical indication can also be considered deceptive, and thus be considered in violation of Article 10, 1, (7) or Article 16, 1.

Prior rights for the name, packaging or trade dress of goods or services with a certain reputation

The name, packaging or trade dress of a product shall not be functional or generic and shall bear distinctive features that can be distinguished from other signs. In addition, the name, packaging or trade dress of product shall have obtained a certain reputation and can function to distinguish the origin of the goods/services. The similarity between the mark applied for and the name, packaging or trade dress of the product, and the associations between the goods/services of the two parties shall be taken into consideration when deciding whether the mark applied for infringes the rights and interests of the holder of the name, packaging or trade dress of the product.

Other prior rights and interests protectable by law

Other prior rights and interests, such as the names of works or characters in a work, are protectable against preemptive registration or infringing use. Usually, the similarity between the signs of the two parties, the association between the goods/services and the reputation of the prior signs shall be taken into consideration when considering whether the mark applied for infringe the prior rights and interests.

The Guidance also lists actions against marks conflicting with another party’s prior rights, including filing oppositions or invalidations against the marks by rights holders, refusing the application or invalidating the registration ex officio for bad faith filings, initiating a civil lawsuit to stop the use of the mark and requesting compensation by rights holders if the mark is in use.

Cracking down on bad faith

The CNIPA has been exerting great efforts to crack down on bad faith filings and to encourage the trade mark filing and use in accordance with the bona fide principle and for the purpose of genuine use. The Guidance further shows the efforts and resolution of the CNIPA to regulate the proper trade mark registration and use.

Shufang Zhang and Ling Zhao are members of CCPIT Patent and Trade mark Law Office and Ling Zhao is a member of the MARQUES China Team