China's Trademark Law adopts the first-to-file principle, which grants exclusive trademark rights to the party that applies to register the mark first in China. However, the law also affords a certain degree of protection to unregistered trademarks. This article examines the relevant provisions with regard to opposition/invalidation actions concerning unregistered marks in China.
If the user of an unregistered trademark discovers that its mark has been applied for or registered by another party, it may raise an opposition/invalidation action against the published/registered trademark based on Articles 7, 13, 15 and 32 of the Trademark Law. These articles establish the following principles:
- Article 7 establishes the principle of good faith for trademark use and registration.
- Article 13 protects unregistered trademarks which have been recognised as well known in China.
- Article 15 prohibits distributors, agents and others that have business contacts with the owner of the unregistered mark from registering the same or a similar trademark for the same or similar goods and services.
- Article 32 prohibits the pre-emptive bad-faith registration of trademarks which have been used earlier by other parties and have achieved a high degree of recognition, and of marks that conflict with other existing rights of a third party, such as copyright or rights in a trade name.
Article 7 of the amended Trademark Law, which came into force on May 1 2014, states that: "The principles of honesty and trustworthiness should be followed when a trademark is used and filed for registration."
This article is a useful means of restraining trademark squatting, as it can be used as a safeguard against bad-faith registrations which cannot be stopped by other grounds set out in the current law. However, Article 7 alone is insufficient to overturn a registration – it will succeed only when used in combination with other grounds.
Article 15 of the Trademark Law states that:
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 authorisation, 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 earlier 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.
Under Article 15.1, the petitioner must prove that there was an agency or representative relationship between itself and the applicant or registrant of the similar or identical trademark prior to the filing date. In addition, the petitioner must provide evidence that it is indeed the real and original creator and user of the trademark.
If it is difficult to prove the agency or representative relationship between the parties, but the petitioner can provide evidence of a contract, business or other relationship, then the opposition/invalidation action could be based on Article 15.2, which applies to similar marks used for similar goods or services.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.