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
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
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
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.
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