The PRC Trademark Law prohibits any party registering a mark owned by another party as a prior right, as prescribed in Article 32 that “an application for trademark registration shall not infringe others’ existing prior right, nor shall it use unfair means to preemptively register a trademark that has already been used by others and has a certain impact”.
However the “prior rights” referred to in Article 32 exclude prior trademark rights e.g. prior trademark applications or registrations in respect of same or similar goods and services, but specifically refer to and include those explicitly prescribed, for instance, a protected trade name, industrial design, copyright, designation of origin, natural person’s name, portraiture, unique product package, or trade dress. With the development of network technology and social progress, some new legitimate interest objects have emerged in recent years, like game names, character names in movies and television works, platform accounts etc..
In practice, increasing number of new types of interest objects have been included for scope of protection by administrative and judicial authorities. We therefore list the following two typical cases in the recent years for your easy reference.
- Opposition against Trademark Application No. 58141161 “张子憨 (pronounced as ‘Zhang Zi Hang’)”
In this case, CNIPA (the National Intellectual Property Administration of China) makes a decision to disapprove the opposed trademark for registration after considering the factors
(a).The opponent has been operating a TikTok account “Zhang Zi Hang” to promote clothing and provide outfit ideas and the TikTok account “Zhang Zi Hang” has owned huge numbers of fans so that the opponent enjoys the legitimate prior interests to the TikTok account;
(b). The opposed trademark is identical with the account and the respective services are also similar; and
(c). The opposed party’s filing the trademark application is difficult to affirm coincidence.
- Opposition against Application No. 42073902 “诗词大会 (meaning ‘Poetry Conference’)”
CNIPA (The National Intellectual Property Administration of China) holds that the show “中国诗词大会” (China Poetry Conference) has had been higher in the ratings since its inception, which has brought huge commercial value, and these are attributed to the opponent’s creative achievements. In this sense, the show, a well-known show name, shall be protected as a prior interest. The opposed trademark The trademark “诗词大会” (Poetry Conference) is significantly the same as the name of the program, and its registration and use improperly exploit the commercial reputation enjoyed by the opponent based on its television program and will damage the legitimate rights and interests of the opponent. Therefore, this application is not approved registered.
From the cases above, the main factors below are usually taken into consideration by the administrative and judicial authorities when determining prior legitimate interests:
-The name or identification to be protected as prior interests is highly significant;
– The name or identification bears creation from the creators and has gained high commercial value and influence in business.
-The third party’s trademark is identical with or confusingly similar to such prior rights
-The behavior of the applicant is not justifiable
When the legitimate rights and interests of the right holder are infringed upon, the right holder evaluates the success rate of taking action against the improper behavior of the applicant based on the above factors. Of course, different cases have different backgrounds, so factors vary from the cases. If you want to have more professional comments, don’t hesitate to contact us.
Contact:
BOSS & YOUNG IP SERVICES LAW OFFICE
5/F., Tower A, GT International Center, 3 Yongandongli,
Jianguomenwai Ave., Chaoyang District, Beijing 100022, China
Tel: (86 10) 5879 3300
Email: liujs@boss-young.cna
