The article was first published in Asian-Counsel magazine, issue May 2008 www.pbpress.com
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 regulations.
Liability
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.
