Pursuant to the judicial interpretations enacted by the Supreme
People's Court of China in February 2008, if a prior registered
trademark owner files an infringement lawsuit against the use of a
latter registered trademark, courts will refuse to accept the case.
The prior trademark registrant must first initiate a trademark
dispute action with the China Trademark Review and Adjudication
Board (TRAB) to invalidate the latter registered trademark. The are
various reasons that may prevent the latter registered trademark
from being invalidated within a short period of time, making it
difficult for the prior registrant to prevent continued
infringement by the latter mark in a timely manner.
However, before the filing date of the registered infringing
trademark, if the owner has obtained other rights, such as
copyright, trade name rights, rights of portrait, individual's
naming rights, design patent rights, etc. to the mark, based on
such prior rights, an infringement lawsuit can still proceed
against the latter registered infringing mark. Thus, the owner may
be able to prevent further infringement of its mark without being
subject to the delays involved in the TRAB process.
In recent years, courts across China have issued several
judgments supporting prior copyright owners' infringement
claims against latter registered trademarks. For example, in
January 2007, Coach Inc. ("Coach")
brought a copyright infringement lawsuit against Guangzhou Huani
Co. Ltd. and other 3 companies and individuals who produced or sold
bags, purses, and other items bearing Huani's registered
trademark seen here: No.
1927601, which was found to be a bad faith imitation of Coach's
famous trademark and artistic work seen here: . To prove its prior copyright, Coach
provided magazine advertisements for the same goods bearing the
trademark and artistic work above, which they launched in the US,
Hong Kong and Mainland China, as well as the copyright registration
certificate issued by China Copyright Protection Center (CCPC) with
the creation date of the work. Coach also submitted punitive
decisions issued by Administrations for Industry and Commerce
("AICs") relating to the defendant
producing counterfeits of Coach products and the defendant's
misleading promotional websites, so as to prove bad faith. In the
end, the court agreed with Coach's view and ordered the
defendant to stop using its latter registered trademark because it
infringed upon Coach's prior copyright. The defendant was also
ordered to pay RMB300,000 in compensation to the plaintiff.
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.
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