*88888888888888888888888888888888888888888888* * The China Trademarks Newsletter keeps you up to date on recent developments in China Trademark law and practice
China Trademarks Law
Proving Prior Rights in China
One of the most common Intellectual Property issues our clients bring to us is Trademark protection; often for unregistered trademarks. What can you do to protect your Trademark against someone who has registered the same, or a similar mark in China? Your only hope is to attempt to prove your prior rights to the Trademark. This is exceptionally difficult.
As part of filing an Opposition action at the China Trademark Office (CTMO), one of the requirements is to demonstrate prior rights. The most effective way to do so will be to present a registration certificate for an existing China Trademark. If a Trademark registration certificate is not available you can attempt to provide evidence of prior use, but typically this will not have a strong effect.
We often advise our clients to submit evidence of the Copyright of the relevant Trademark. Copyright protection differs from Trademark protection as Copyright is an innate right of the author of a particular work of art to the use of that work of art. Most common Trademark devices and logos were first simply works of art.
If the CTMO does not rule in favor of the Opposition, there are still opportunities to challenge the Trademark registration before the Trademark Review and Adjudication Board (TRAB) and in the court. These are of course more costly, but these bodies will typically consider additional factors and evidence in reaching a decision.
The foremost point to remember is that China is a First-to-File system which grants priority to a party who files a Trademark registration application first over a party which may have prior rights, but which has not filed.
Reliance on prior rights is a last resort, and a long-shot.
This document has been created for educational purposes for clients, potential clients and referrers of services to LEHMAN, LEE & XU, and to alert readers to the services provided by LEHMAN, LEE & XU. It is not intended to serve as definitive professional or legal advice, and should not be relied upon as such. LEHMAN, LEE & XU does not endorse any personal opinions which may be contained herein.
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