Court No Longer Accepts Cases Involving Disputes on Grant of Trademark Registration (7 April 2005)

 


Recently, the Supreme People's Court, in reply to an inquiry on handling of a case in relation to dispute on registered trademark rights, held that such a case involving dispute on grant of trademark registration shall not be accepted. A relevant staff member in the Supreme People's Court said, while having an interview with a reporter, that although the above conclusion is responding to a specific case, it may provide guidance to other similar cases.

It is pointed out in the Supreme People's Court's reply that in accordance with the provisions of Chinese Trademark Law and Civil Procedure Law, with regard to dispute on conflict of exclusive right over a registered trademark that is derived from granting of the registration, a plaintiff shall be notified to file the dispute with the administrative authorities. Such a case shall not be accepted at people's court. Article 30 of Chinese Trademark Law provides that to a preliminarily approved trademark, any person may file an opposition within 3 months from the date of the publication. Article 41 stipulates that where a registered trademark stands in violation of the provisions of Article 10, 11, 12 of this law or the registration of a trademark was acquired by fraud or any other unfair means, the Trademark Office shall cancel the registered trademark in question; Any other organization or individual may request the Trademark Review and Adjudication Board (referred to as "TRAB" hereafter) to make an adjudication to cancel such a registered trademark. Where a registered trademark stands in violation of the provisions of Article 13, 15, 16 and 31 of this law, the owner of the mark or any interested party may, within five years from the date of registration, request the TRAB to make an adjudication to cancel such a registered trademark. Where a registration was obtained in bad faith, the owner of a well-known trademark shall not be bound by the five-year limitation. In addition to those cases as provided in the preceding two paragraphs, a prior registrant disputing a registered trademark may, within five years from the date of the approval of the trademark registration, apply to the TRAB for adjudication.

According to the reply of the Supreme People's Court, where a party uses a company name that is identical with or similar to the wording of a third party's registered trademark, which is against Principle of Honesty and likely to cause confusion to the relevant public as to the source of the goods/services concerned, the court may, upon the request of the interested party and pursuant to the provisions of the General Principles of the Civil Law and Article 2(1)&(2) of the Anti-Unfair Competition Law, ascertain whether the act constitutes unfair competition and prosecute the actor for civil liability, when he/she is liable.

(from "China Intellectual Property").