The article was first published in Asian-Counsel
magazine, issue May 2008
In China, different administrative authorities are in charge
of the administration of trademarks, enterprise names,
copyrights, patent rights etc. For example, the Trademark
Office ("CTMO"), the Intellectual Property Office and
Copyright Administration are responsible for the grant and
administration of trademarks, patents and copyrights,
respectively. Local departments of the State Administration of
Industry and Commerce at or above county level are responsible
for the registration of enterprise names.
Due to the aforesaid competency structure for administration
of trademarks, enterprise names, copyrights, patents etc.,
conflicts involving such intellectual property rights are quite
common in day-to-day practice. In particular, the phenomenon of
registration of trademarks by using enterprise names registered
for the benefit of another company and vice versa registration
of enterprise names by using trademarks registered in the name
of another natural/legal person seriously damage the legal and
economic rights of those entities/persons involved.
Additionally, due to the fact that various administrative
authorities are involved, settlement of conflicts as to their
respective competences can sometimes be problematic.
Based on the judicial development and practice as seen in
recent years, the Supreme People's Court of the PRC
("Supreme People's Court") issued the
"Provisions on Issues with respect to the Trial of Cases
concerning the Conflicts between Registered Trademarks,
Enterprise Names and Prior Existing Civil Rights"
("Provisions") on 18 February 2008.
The Provisions became effective as of 1 March 2008 after the
draft Provisions were published online in December 2005 for
comments by the public. Compared to the draft Provisions, the
finally promulgated version of the Provisions is comparatively
brief and contains only four articles focusing on the most
prominent issues which need to be addressed and hopefully thus
being resolved in judicial practice.
Cases Shall Be Accepted By People's Courts
The Provisions specify acceptance requirements to be
fulfilled in order for a People's Court to accept the
case in the first place. Further, the Provisions outline the
methods for assuming liability with respect to conflicts among
trademarks, enterprise names, copyrights, patents etc.
According to the Provisions, the following cases shall be
accepted by a People's Court without the requirement of
prior administrative procedures:
Cases filed by a plaintiff on the basis that e.g. the
character or graphic used in the registered trademark of the
defendant infringes upon the plaintiff's existing
copyright, design patent or right regarding the
plaintiff's enterprise name;
Cases filed by a plaintiff on the ground that the
defendant's trademark is used in relation to goods or
services for which it is not registered, or by transforming
the trademark's distinctive features, disassembling
it or re-configuring it in a way that it is identical or
similar to the registered trademark of the plaintiff;
Cases filed by a plaintiff on the ground that the
enterprise name of the defendant is identical or similar to
the prior registered enterprise name of the plaintiff to the
extent that the public will likely be confused about the
source of the plaintiff's commodities.
With respect to the conflict between registered trademarks,
the Provisions emphasize that such disputes shall be submitted
to the competent administrative authorities for resolution in
accordance with the PRC Trademark Law and other relevant
As provided by the Provisions, if the enterprise name of the
defendant infringes upon another legal/natural persons right of
exclusive use of a registered trademark or constitutes unfair
competition in accordance with the PRC Anti-Unfair Competition
Law, a People's Court may, by taking the
plaintiff's petition and the specific situation of the
case into account, order the defendant to cease or legalize the
use of the enterprise name and to assume corresponding civil
liability. In practice, "legalize the use of an enterprise
name" refers to an order that the infringer uses the
enterprise name within the scope determined by the
People's Court and refrains from emphasizing the trade
name contained in the enterprise name.
The holders of enterprise names registered in jurisdictions
other than the PRC shall also undertake liability, as mentioned
above, if such enterprise names infringe upon the right of
exclusive use of a registered trademark or another
legal/natural entity in the PRC or constitute unfair
competition in the PRC subject to the principle of
"territoriality of intellectual property rights".
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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