On August 30, 2013 the Standing Committee of the National People's Congress adopted the third amendment to the Trademark Law of the People's Republic of China, which will enter into force on May 1, 2014.
Does the new trademark law address the concerns of trademark holders as to the rampant instances of trademark grabbing by unauthorized Chinese parties?
- Challenges under the current trademark law
The actual trademark law, and the related case law of Chinese civil courts as well as the practice of the relevant administrative bodies in charge of trademark protection in China have clearly failed in preventing and punishing a most common form of trademark infringement in China, namely that of the so called trademark grabbing together with the related fall out of trademark trolls actions against foreign investors in China. Following we will briefly address such legal issues and we will then analyze the new trademark law to see whether and how these issues have now been dealt with.
- Trademark Grabbing
Under Chinese trademark law, only a registered trademark enjoys protection and the first person or entity to register it becomes its lawful owner, even if that trademark has already been used by others in China. Known as "trademark trolls," certain Chinese companies or individuals are known to actively follow a strategy of registering intellectual property rights in China that arguably belong to their foreign competitors. Aware of the very strict "first to file" principle, they identify, apply and register trademarks belonging to competitors who have forgotten or not yet taken steps to register them.
The actual law and the related practice of all relevant civil and administrative bodies cannot prevent such occurrences. The usurped right holder's only actual recourse is that of filing a trademark cancellation action and wait years for the hostile trademark to be cancelled, if this is actually really going to happen. The problem for the rightful trademark owner is that in the meanwhile, any act of manufacturing, selling, importing and offering for sale of his products with that stolen trademark, will constitute an act of infringement. The result: the grabber, aware of this, may file a civil or administrative enforcement, thus damaging the foreign company's business and reputation. There have been indeed several of such trademark troll cases in China in the last years.
The current legal system does not recognize any legal right to the prior use the foreign holder has made in China of that trademark before the registration of the same obtained by the usurper. The system does lack indeed a legal structure to balance the possible injustice created by the strict observance of the principle of "first to file".
Trademark grabbing particularly affects medium and small foreign enterprises in China. Lack of knowledge of the trademark system of this country leads often to ineffective trademark filing policies. The loopholes left by unsystematic trademark filings are cleverly exploited by individuals (professional grabbers), competitors, and by local business partners. The latter may initially even do it in good faith, but may later discover that this is a very good bargaining weapon and a preventive tool in case they decide to leave the partnership and become competitors.
Seen in this perspective, trademark grabbing can indeed cause a business to be prevented or to be forced to leave the Chinese market in consequence to the "legal" loss of its brand and the related goodwill.
- Any Solutions in the new Trademark Law?
The fact that trademark grabbing has actually reached levels that negatively affect fair competition and distort the principles backing the first to file system upon which the Chinese trademark law is based, has been now fully acknowledged and concrete changes of policy are now visible in the new trademark law.
The first acknowledgement of the existence of an unfair exploitation and abuse of the rule of first to file is the first time ever embodiment of the principle of good faith/bad faith in the trademark Law. Article 7 of the Trademark Law now expressly provides that the application for registration and use of a trademark shall be based on the principle of good faith. Such principle alone can constitute now a solid legal ground to file a trademark cancellation. Such wasn't the case in the past, due to the lack of a legal base upon which to support a bad faith registration claim.
Aside from reinforcing the legal grounds for filing cancellations against the grabbed trademarks and speeding up the timing for completion of cancellation procedures, a most important change of policy and an exception to the "first-to-file" principle, is now contained in the new trademark law. For the first time in the history of the trademark law of China, if we exclude the case of unregistered well-known trademark, a right of prior use of a trademark in China is recognized under certain conditions, with a positive fall-out for the rightful owner in cases of trademark grabbing.
Article 59 of the third amendment of the trademark law provides that if someone has used a mark identical or similar to a registered trademark, in respect to identical or similar goods, before the date of filing of the latter trademark, and under the condition that the prior mark has meanwhile obtained a certain degree of reputation in China due to its use, the trademark registrant has no right to prevent the prior user from further employing such mark within the original scope of its use. At most, the trademark registrant may impose to the prior user the addition of an indication of distinction to the prior mark.
The norm goes even further by protecting the prior use of designs and shapes which may later form the body of a registered trademark or 3D mark. According to the same article 59, the exclusive right owner of a registered trademark may not prohibit others from the rightful use of the generic names, models or designs of the goods as included in the registered trademark, including registered 3D marks.
Even if the trademark grabber dared filing an enforcement lawsuit against the prior user, not only he would face the risk of rejection of his claims based on art. 59, but will also be subject to another risk related to the non-use of the stolen trademark. In fact, article 64 of the new trademark law provides that the alleged infringer, in this case the prior user, can raise non-use as a defense in a civil lawsuit for trademark infringement and the plaintiff has the burden to prove that he has used the trademark during the last three years from the date of the lawsuit. If the Plaintiff fails to prove the use of the trademark as requested, the defendant will be exempted from the payment of any damages. Considering that in force of article 59 the prior user can continue to use its mark within its original scope of use, a lawsuit in such a case would be of no consequence for the prior user. Such situation is actually the most typical in cases of trademark grabbing. Most grabbers will in fact not use the trademark, given that the only purpose of stealing is to prevent the filing and use of the trademark by the foreign prior user.
These new norms are a welcome addition to the Trademark Law. The prior user will have thus the right to continue to use his unregistered marks in China while attempting the cancellation of the stolen trademarks. This will give to the prior user and rightful owner of that sign to prepare and implement cancellations strategies without stopping his business in China.
At the same time, this norm should also discourage the trademark grabbers, especially the professional ones, considering that they normally just grab marks but do not use them. In this respect, a further restraint from grabbing is provided by the new article 64, especially considering that most grabbers never use their trademarks and with such awareness will likely refrain from civil enforcement.
We will now have to see in practice how all these new norms will really impact the trademark practice in China, but there are surely reasons for optimism.
1 See Paolo Beconcini, Kelly Liu in "$5M Case Highlights Risk from Chinese trademark Trolls" in Law 360 Law Journal of October 17, 2012.
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