Trademark right and trade name right fall in to different categories, and are regulated by different laws, specifically, trademark rights are considered intellectual property, while a trade name right is seen as a commercial personal right. When there is conflict between past deadline trademark and earlier registered trade name right, we need to consider we can protect the earlier trade name right?
According to the article 32 of China Trademark Law, trademark application shall not infringe upon another party's existing prior rights. The existing rights regulated in this article include trade name right, copyright, design patent right, name right, portraiture right and other legitimate pre-existing rights which shall be protected.
The disputed trademark shall not be approved for registration or shall be invalidated, if it infringes another party's prior trade name right. The applicable elements include the following aspects:
(1) The trade name has been prior registered or used by another party before the filing date of the disputed trademark;
(2) The trade name enjoys certain reputation in mainland China before the filing date of the disputed trademark;
(3) The registration and use of the disputed mark may cause confusion amongst relevant public, and damage the interests of owner of prior trade name.
It is usually difficult to prove that the trade name enjoys certain reputation in mainland China before the filing date of the disputed trademark, thus, the prior trade name right is easily ignored. However, if the prior trade name right is properly claimed, an unexpected result may be obtained.
In the "LANXESS opposition case", the claim about prior trade name right was supported by the National Intellectual Property Administration, PRC ("CNIPA"). LANXESS DEUTSCHLAND GMBH ("Opponent"), is a famous specialized chemical products manufacturer, it mainly produces chemical products for industry and agriculture purposes. Opponent's trade name "LANXESS in Chinese characters" is a transliteration of its Latin trade name "LANXESS;" it bears certain originality as a trade name, and it is used as trade name and house trademark by the Opponent for several years, and enjoys certain reputation amongst relevant public in China.
Shuhua Yu ("The opposed party") applied a trademark registration for "LANXESS in Chinese characters" ("The opposed mark") on May 7, 2015 over the goods "Chemical fertilizer; Vegetable fertilizer; Animal fertilizer; Fertilizer; Compost; Fertilizing preparations; Salts [fertilisers]; Earth for growing; Soil conditioning preparations; Fertilizer agricultural purposes." The opposed mark was preliminarily approved and published for opposition by the CNIPA. Opponent filed opposition against the opposed mark within prescribed time limit based on the following grounds:
1) The opposed mark is a similar mark over similar goods compare with the Opponent's prior registered trademark for "LANXESS in Chinese characters" ("Cited mark") over the goods "Industrial chemicals; Chemical preparations for scientific purposes, other than for medical or veterinary use; Agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides, etc. "; and
2) The opposed mark infringes the Opponent's prior trade name right for "LANXESS in Chinese characters".
After examination, CNIPA held that although both parties' trademark are same, the opposed mark's designated goods are not similar to the designated goods of cited mark in respect to function, use purpose and target consumer, so they are not similar goods. Therefore, the opposed mark is not a "similar mark over similar goods" compared with the cited mark. However, Opponent's submitted evidence, such as advertising contacts, exhibition contacts, sales contacts and bill of lading, invoices, sales agreements, auditing report, etc. can prove that cited mark "LANXESS in Chinese characters" obtained a high reputation in specialized chemical industry before the opposed mark's filing date; Opponent's trade name "LANXESS in Chinese characters" also enjoys a high reputation amongst the relevant public through long-time use. The designated goods of two parties have strong connection. Considering the strong distinctiveness of Opponent's trade name, registration and use of the opposed mark will mislead the relevant public concerning the origin of goods, and damage Opponent's interests. Thus, registration of the opposed mark infringes Opponent's prior trade name right and shall not be approved for registration.
In the above case, the examiner did not support Opponent's first claim reasoning that the opposed mark's designated goods are not similar to cited mark's goods according to the Chinese classification system. China adopts subclass system, namely, goods fall into different subclasses are not similar unless otherwise stated according to the Chinese Classification of Goods and Services. Though both of the opposed mark's goods and the cited mark's goods fall in Class 1, they fall into different subclasses, and thus, they are not deemed as similar goods. In practice, it would be very difficult to break through the subclass system, especially in opposition case, examiner basically rigidly follows the Chinese Classification of Goods and Services to examine the goods' similarity.
Gladly, examiner supported Opponent's second ground, reasoning that the opposed mark is same with Opponent's trade name, and the trade name enjoys certain reputation amongst relevant public in mainland China through long-term use and promotion by Opponent's Chinese subsidiaries. Although the opposed mark's goods are not similar to cited mark's goods, they are closely related to Opponent's products, and Opponent's trade name bears strong originality. Therefore, the registration and use of the opposed mark may cause confusion amongst relevant public about the goods' origin, and subsequently, damage Opponent's interests.
It is obvious, claiming prior trade name right does not need to prove that the parties' goods are same or similar according to the Chinese Classification of Goods and Services; if there is a likelihood of confusion in the market because of the high connection between the parties' goods, this claim may be supported.
Generally speaking, the scope of trademark's designed goods is narrower than trade name owner's business, so the following three points should be taken into consideration when claim prior trade name right:
1) The disputed mark should be same or highly similar with another party's prior trade name, and the prior trade name bears strong distinctiveness. In other words, if the degree of similarity between the disputed mark and the prior trade name is not high enough, the prior trade name right claim will not be supported.
2) The prior trade name must enjoy certain reputation before the filing date of the disputed mark. If another party's trade name is same with his house trademark, and the house trademark enjoys high reputation before the filing date of the disputed mark, it will be much easier to prove that the trade name enjoys certain reputation, because both of reputation of trade name and trademark will be simultaneously improved through use. In the "LANXESS opposition case", "LANXESS in Chinese characters" is Opponent's trade name, and it is also Opponent's house mark which has been used directly over Opponent's all products and commercial materials. The evidence is sufficient to prove that the house mark enjoys high reputation amongst relevant public, simultaneously, as for "LANXESS in Chinese characters", as the opponent's trade name, its reputation has been greatly strengthened as well.
3) We should fully consider and argue the relevance between the goods of the disputed mark and the goods that the trade name owner actually produces or manages. They do not need to be identical or similar according to Chinese classification system, but must be relevant and highly connected with each other.
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.