Recently, the CNIPA has issued guidance to promote the principle of good faith in trademark application and usage. The aim is to prevent infringement on existing prior rights and confusion among consumers.
Aligned with Article 32 of the China Trademark Law, the guidance explicitly prohibits the infringement of prior rights held by other parties. It clarifies that these "prior rights" refer to legally recognized rights and interests such as trade names, copyrights, design patents, personal name rights, portrait rights, geographical indications, and reputational elements like product names, packaging, and trade dress. It's important to note that "prior rights" in this context does not include prior trademark rights, which are protected under different provisions of the law.
The guidance emphasizes that entities should adopt a good faith approach when applying for or using trademarks. This entails conducting thorough searches, including online searches, checking the national enterprise credit information system, and utilizing the patent search and analysis system provided by CNIPA. These measures ensure the fulfillment of due diligence to avoid conflicts with prior rights.
Furthermore, the guidance highlights the importance of obtaining permission from holders of prior rights before registering and using a trademark. It also emphasizes adhering to the conditions and limitations specified in the license agreement. Proper use of the registered trademark is crucial to avoid infringing upon prior rights, particularly when making stylized or altered modifications.
To assist entities in understanding and addressing potential conflicts, the guidance provides a list of common scenarios where conflicts with prior rights may occur in trademark application and usage:
Prior Trade Name Rights: When considering a trademark application, if the proposed mark is identical or bears similarity to another party's registered trade name or previously used trade name that has built a solid reputation, or if it resembles the abbreviation of a company name that holds established connections with said party, and the mark is intended for use on the same or similar goods or services, it should not be permitted for registration or use.
During the assessment process, several factors are taken into account to determine whether the applied mark infringes upon prior trade name rights. These include the distinctiveness and reputation of the respective trade names, as well as the similarity between the goods or services offered by the parties involved. This approach aims to safeguard existing trade names and minimize confusion among consumers.
Prior Copyrights: It is crucial to consider and respect prior copyrights. If a proposed trademark is found to be identical or substantially similar to another party's copyrighted work that is still under copyright protection, it should not be permitted for registration or use. To determine whether such infringement exists, various materials can be used as evidence, including publications of the copyrighted work, records documenting its creation, copyright registration certificates, as well as valid judgments or official decisions indicating ownership of prior copyrights over the work.
Prior design patent rights: Similar to prior trade name rights, if a proposed trademark bears similarity to another party's prior design patent that is still within the term of protection, it should not be permitted for registration or use. The mark applied for is deemed to be similar to the design when either the major part or the overall appearance of the mark exhibits similarities with the design.
Prior name rights: If the proposed trademark bears similarity to a well-known name that has gained reputation and established strong connections with that party, it should not be allowed for registration or use. The reputation of the name, the areas where the name is widely recognized, and the intended fields of use for the mark are taken into account when determining whether the applied-for mark infringes upon the name rights of another party.
Furthermore, there are certain restrictions on registering specific types of names as trademarks. Names of martyrs, names of deceased famous individuals, one's own name resembling that of a famous person, and names of famous individuals in religious fields cannot be registered as trademarks. Such filings would be considered deceptive, immoral, or against public order, which goes against Article 10, 1 (7) or (8) of the Law. Trade marks with such characteristics are prohibited from use.
Prior portrait rights: In the process of trademark registration, it is essential to obtain permission from the relevant party if the proposed trademark resembles their portrait, picture, or sculpture. Without such consent, the trademark should not be registered or used. When determining whether the applied-for mark infringes upon another party's portrait rights, consideration is given to potential confusion regarding the origin of goods or services in relation to the trademark registration and use.
Prior geographic indications: If an applied-for trademark is the same as or similar to prior geographical indications, it should not be allowed for registration or use. When determining whether the mark infringes upon another party's prior geographical indications, factors such as the reputation and distinctiveness of the geographical indications, the public's awareness of them, and the applicant's bad faith are taken into account.
In practice, a trademark that is identical to or similar to a geographical indication can also be deemed deceptive, which would violate Article 10, 1 (7) or Article 16, 1.
Prior rights for the name, packaging or trade dress of goods or services with a certain reputation: In trademark registration, the name, packaging, or trade dress of a product should not be functional or generic. Instead, they should possess distinctive features that set them apart from other signs. Moreover, the name, packaging, or trade dress of a product should have gained a certain reputation and serve as a means to distinguish the origin of goods or services.
In determining whether the applied-for mark infringes upon the rights and interests of the holder of a product's name, packaging, or trade dress, factors such as the similarity between the mark and the product's name, packaging, or trade dress, as well as the associations between the goods or services of both parties, are taken into account.
Other prior rights and interests protectable by law: Other prior rights including the names of works or characters in a work, from preemptive registration or infringing use. When determining whether the applied-for mark infringes upon these prior rights and interests, factors such as the similarity between the signs used by the two parties, the association between the goods or services, and the reputation of the prior signs are taken into consideration.
The Guidance also provides measures that can be taken against marks conflicting with another party's prior rights. These actions may include filing oppositions or invalidations against the marks by the rights holders, refusing the application or invalidating the registration ex officio for instances of bad faith filings, initiating a civil lawsuit to halt the use of the mark, and seeking compensation by the rights holders if the mark is being used.
The guidance has shown the CNIPA’s strong willpower of making significant efforts to combat bad faith filings and promote trademark registration and use based on the principles of good faith and genuine intent. It also demonstrates the CNIPA's commitment and determination to regulate proper trademark registration and usage practices.