On February 18 2008, the Supreme People's Court of China passed the Provisions on Issues Concerning the Trial of Civil Cases Involving the Conflict between a Registered Mark or an Enterprise Name with Prior Rights. The Provision came into force on March 1.
There have been many cases where the word or device in a registered trade mark may conflict with another's prior right such as copyright, design patent right or enterprise name right. The Provision now makes it clear that the aggrieved owner of the prior right may sue the owner of the trade mark in court directly for putting it in use without first having invalidated the trade mark at the Trademark Review and Adjudication Board (TRAB) under the provisions of the Trade Mark Law.
As the courts have handled many cases like those above, judges have gained substantial experience. Moreover, unlike the TRAB which takes a few years to reach a cancellation ruling, the courts can deal with these matters much more quickly.
However, where the prior right in question is an earlier registered trade mark, its owner is still required to invalidate the subsequently registered trade mark at the TRAB before initiating any action at court. On the other hand, if the unauthorized use of the mark is in respect of goods/services beyond the specification of the registration, or if the mark has been altered (for example, using two registered marks in combination) but that it is still the same or similar to the prior mark, a civil action may be launched directly.
It was thought that trade mark cancellation is more appropriately handled by the TRAB so that the same standard may be applied to different cases. Moreover, there is less chance for local protectionism.
It is clarified that the owner of an enterprise name may rely on Article 5(3) of the Anti-Unfair Competition Law to commence action at court against use of an identical or similar enterprise name registered subsequently if such use is likely to cause confusion among consumers as to the source of the goods/service. Article 5(3) of the Unfair Competition Law provides that unauthorized use of the enterprise name of another person causing confusion as to the source of goods/services is an act of unfair competition.
The proper cause of action to be pleaded is infringement, unfair competition and the like. Mere conflict between the rights is not a proper cause of action.
In the case of infringing use of an enterprise name, apart from ordering the infringer to cease use of the name, the court may, in appropriate cases, impose a restriction on the use instead.
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Howard Tsang |
Wilkinson & Grist
6/F, Prince's Building, 10 Chater Rd
Central, Hong Kong
Tel: +852 2524 6011
Fax: +852 2520 2090
