By Luo Yanjie
As two different concepts in law, trademark plays the role as to distinguish the origin of the product or services, and the trade name is the literal expression to indicate different companies. But in the daily operation, we may see the confusion between these two concepts, and the trade name may also be used as kind of mark in business. Naturally, we see many companies choose to register their name as the trademark. Despite the similar function of them, the trademark and trade name are verified by different administrations (the mark is subject to the administration of trademark office, and the trade name is ruled by local administration of industry and commerce), but that also triggers the conflict between two objects. In today?s post, we would like to analyze the conflict occurred when trade name registered prior to the trademark by different subjects.
I. Shall it be ?prior rights? in Trademark Law of trade names?
As provided in Article 31 of Trademark Law:
?An application for the registration of a trademark shall not create any prejudice to the prior right of another person??
That shows the trademark to be registered shall be adopted first, and in addition to being exempted from the conflict with other first registered trademarks, it shall also not clash with any prior legal rights. But in the Trademark Law, we have seen no detailed specifications on the ?prior rights?.
Generally, any exclusive rights like copyright or patent for design shall be included in the ?prior rights??and with no consent by the rights, any trademark concerned with such rights shall not be registered as the trademark. Yet, considering the territorial limitation, there may admit two different companies with the same name in Beijing and Shanghai. Therefore, here comes the question that could the prior used trade name strike against the exclusive trademark right?
Since it?s quite common to see a large number of renowned trade names are not registered as trademarks, the malicious squatters could never hungered for their opportunities. Therefore, if there are no prohibitive regulations in law, the order of social economy could be lost in chaos. And for this reason, either in the regulations issued by administrations or judicial interpretations, the trade name is listed in the ?prior rights? as provided in Article 31 of Trademark Law. And the specific legal ground is as follows?
1?The Standard for Trademark Review issued by Trademark Review and Adjudication Board says that:
?The prior rights regulated in Article 31 of Trademark Law shall refer to other rights, in addition to the trademark right, acquired before the application day of the argued trademark, including the trade name right.?
2. According to Article 1 of Regulations on Several Issues concerning Hearing on Civil Cases between Trademark Rights, Trade name and Other Prior Right:
?When the lawsuit is filed for the infringement claim against the plaintiff?s copyright, design patent, trade name right and other prior rights by any third party?s literal or images, and such claims are complying with the regulation in Article 108 of Civil Procedure Law, the People?s Court shall accept it.?
So, it could conclude that trademark registration could damage the right of trade name which shall also be the first rights.
II. Conditions for first used trade name right to compete later registered trademark
As discussed before, the trade name right could not be classified as the exclusive right and thereby not every first applied trade name could strike against the latter registered trademark, for such fight-against shall conform to the following conditions:
1. The latter registration of trademark is with mala fide.
The mala fide of the latter applicant may be demonstrated from following two aspects:
(1) The contact by the applicant to the ?trade name?
Once the owner of the first right has the evidence to the contact by the latter applicant to the trade name, like as the owner?s dealer, partner or client, it could be more effectively demonstrate the malicious purpose of the applicant.
(2) The reputation of the ?trade name? is too high to claiming unknown to the latter applicant
According to the Standard to Trademark Review, the decision on the public renown of the trade name shall lie with the registration time, using period, territory, business record and propaganda, etc.
It shall be pointed out that the reputation here is a relative standard rather than a resolute concept. That means, the reputation could be variously judged in different cases, once there could proved the latter application is applying its trademark with the awareness of the noted ?trade name?, the mala fide could be established. And that is obviously bearing a different standard to the judgment of well-known trademark.
Like in the conflict over No. 1929467 trademark ???? (Liang Tian), we see the statement by the Trademark Review and Adjudication Board in judging the reputation of trade name that, ?as a company admitted in the same town with the applicant, the respondent shall be fully aware of the reputation of ???? (Liang Tian) used as a trade name which has earned the social reputation. Therefore, the registration of the argued trademark could constitute the trademark squatting, and is infringing the legal interests of the applicant?s trade name right.?
2. The registration and using of the latter applied trademark could result in the public confusion
The ?confusion? here quite resembles that provided in Anti-unfair Competition Law, that they both may mistake the products with latter registered mark is actually manufactured by the company with the name of the mark (you might notice it is quite contrary to the free riding on big brands). Due to the confusion by the consumers is more of a subjective judgment, the administration and judicial organ will judge the issue from the following aspects:
(1) The originality of the first used trade name
When the trade name is fabricated and not for a common vocabulary, it seems to be higher chances for consumer to associate a certain company with the name.
(2) The overlap of the products
Mainly to judge whether products or services indicated by the latter registered mark is the same or quite similar to those of the same name company.
(3) The reputation of the first used trade name
Once a high reputation is enjoyed by the first used trade name, like that has been discussed above, it could contribute to the demonstration of the mala fide of the applicant, also to the confusion among the products or services under the same trademark.
Both to distinguish the identity of the company, the trademark and trade name should have brought no conflict between them, yet it does exit mainly due to the current examination system. Therefore, we would like to suggest companies registered their names as trademarks for the avoidance of the bothering by future conflict.
Other recommended posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China?s Legal System of Trademark Renewal
6. Introduction on the Regulations concerning the Capital Contribution in IPR or Domain Name in China
7. The Copyright Registration in China Could Be FREE?
8. China Copyright Protection Term Longer than EU?s?
9. Matters for Attention in the Patent Preliminary Injunction Application in China(I)
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