On May 01, 2015 a revision of the Chinese trademark law was implemented. This time we would like to explain about the prevention of unauthorized registration by third parties and related regulations. A regulation that prevents unauthorized registration by parties in a business relationship has been established. (Revised Chinese trademark law Article 15.2)
Recently in business partnerships (business partnerships in formation) filing of usurped applications due to the knowledge about the usage of third party trademarks has been increasing. This time the following regulation was established: “If an applicant that files an application that is identical or similar to a mark another person has been using prior to the filing, that is not registered in China, and the applicant has a business relation the other person, and obvious knowledge about the mark of the other person, the other person can file an opposition to prevent registration of that application.”
Should a dispute arise it will be important whether proof for the business relation and knowledge about the trademark can be found. Therefore we believe it will be necessary to record all matters discussed in the relationship with date and obtain a signature from both sides.
With regard to this a regulation has been implemented that says that an attorney may not register trademarks in their own name. Furthermore if an attorney knows that a trademark application of their clients is an unauthorized registration from persons in a business relationship as described above (Article 15) or infringes the rights of prior usage of a third party (Article 32) the attorney shall not represent the client. (Revised Chinese trademark law Article 19)
Additionally, the conditions for rights obtained by prior usage have been established. Article 59.3 of the revised trademark law defines the following: ”where, prior to the application date for a registered trademark, a person has been using a trademark identical with or similar to such registered trademark in respect of the same or similar goods, and such use has started before the registrant of the registered trademark, and has acquired a certain influence, the holder of the registered trademark has no right to prohibit such person from continuing using their trademark within its previous usage range.”
As above in the revision a regulation for unauthorized registration by third parties and related matters was established. However, we believe that it in order to prevent unauthorized registration it is still of advantage to file trademark applications in China early. We can assist you with trademark filing in China, so please do not hesitate to contact us.
Article 32 No trademark application shall infringe upon another party’s existing prior rights. Nor shall an applicant rush to register in an unfair manner a mark that is already in use by another party and enjoys substantial influence.