China ? Is There An Unregistered Trademark That Enjoys The Exclusive Right Of A Trademark Under PRC Trademark Law?
2 December, 2012
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Legal News & Analysis???Asia Pacific?-?China???Intellectual Property
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Article 34 of PRC Trademark Law provides that ???If the registration is granted because it is ruled that the opposition can?t stand, the time that the trademark registration applicant obtains the right to exclusive use of the trademark shall be counted from the day on which the three-month period of preliminary examination and approval announcement expires.?
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Article 37 of PRC Trademark Law provides that ?The period of validity of a registered trademark shall be ten years, counted from the day the registration is approved.?
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From the above clauses, one may encounter some confusing conditions as follows:
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1.??? If a trademark was opposed and was registered after successfully fending off an opposition, is the trademark holder entitled to claim trademark infringement against the opponent?s trademark if use in respect of the similar goods took place during the three-month period after preliminary publication and the registration date?
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Specifically, if a foreign brand holder who has launched its business in the Chinese market but not timely filed and registered its brand in Mainland China opposes a confusingly similar trademark of its brand before the China Trade Mark Office (CTMO), what is the position? The opponent has some commercial use of its brand before the filing date of the opposed trademark and such use continues when the trademark application is pending. When the opposition does not succeed, the opposed trademark proceeds to registration. Under such a condition, can the trademark applicant claim trademark infringement by the Opponent for its commercial use between the three-month period after preliminary publication and the registration date?
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Obviously, both parties are competing in the same field. The trademark registrant obtains and enjoys the right to exclusive use of its trademark from the preliminary publication plus three months. The registrant can enforce its right earlier, in accordance with Article 34 and not from the registration date. However, this is obviously unfair to the opponent. When it used its brand commercially between the said period, the applicant?s trademark was being opposed and not been approved for registration. It seems therefore that this is self-contradictory.
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In our opinion, we believe that the registrant enjoys the right to exclusive use of its trademark from the preliminary publication plus three months. This point of time is, however, to calculate the renewal date of the trademark, but not to be the legal base to claim trademark infringement. Article 34 is a procedural provision but not a substantive provision. The proper legal base to claim trademark infringement should be Article 52.
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The relevant official notice has been issued by the CTMO. (http://www.saic.gov.cn/sbw1/sbyw/200901/t20090123_36510.html, Chinese only)
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2.??? What is the commencement date for the purposes of initiating non-use cancellation against a registered trademark after the procedures of opposition or review on opposition?
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Let us discuss an exact case, an opposition against the trademark ?Wild Tiger &Tiger Device? No. 1975027, owned by a Chinese company in Jiangsu Province. The trademark was filed on 8 August, 2001, published preliminarily on 28 September, 2002 and opposed on 22 November 2002. Finally it was registered on 7 April 2010 after conclusion of an opposition. The opponent is HAW PAR CORPORATION LTD., located in Singapore. The opponent claimed that the opposed trademark was similar to its registered trademark ??TIGER & Tiger Device? No. 311262 in respect of similar designated goods in Class 5. The Trademark Review and Adjudication Board (TRAB) decided in favor of the trademark applicant.
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Thus, if an opponent intends to fight against the trademark via a cancellation based on non-use, when can it file the said cancellation? Article 34 stipulates the trademark applicant has enjoyed the exclusive right since 28 December 2002. The final official decision issued by the TRAB was effective as of 14 December 2009. The trademark was registered on 7 April 2010.
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For a trademark to enjoy the exclusive right, it must be registered. A pending trademark does not enjoy such a right. Accordingly, the applicant?s trademark has enjoyed the exclusive right since 28 December 2002, so the said cancellation would have been a valid claim once the final official decision became effective. But in practice, the CTMO does not accept such a cancellation, saying that the initial date of the said three years should be counted from the effective date of the final official decision, i.e. 14 December 2009. But no legal basis was provided for this allegation.
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In our opinion, the said initial date of the cancellation should be counted from 28 December 2002, from which the trademark holder enjoys the exclusive right. The CTMO should accept such a cancellation but may judge in favor of the trademark holder based on its claim that the trademark has been opposed and not been registered in the said three years, so it has the legitimate reason for non-use. In fact, the said cancellation should be counted from the registration date of the opposed trademark, i.e. 7 April 2010, in accordance with Articles 37 and 44.
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3.??? The above mentioned official notice issued by the CTMO recognizes that the validity of a trademark is counted from the preliminary publication plus three months, but Article 37 says that the period of validity of a registered trademark shall be ten years, counted from the day the registration is approved. As such, this also seems contradictory.
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The aim of this official notice is to try to solve the slow examination and renewal process for those opposed trademarks, and Article 34 is cited. As mentioned, Article 34 is procedural. Against this, Article 37 is substantive and affects the real trademark right and trademark disputes. Therefore, it is the proper legal basis for a claim of cancellation for non-use and trademark infringement.
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In conclusion, PRC Trademark Law contains procedural and substantive articles for specific trademark issues. From the above analysis, it appears that different Articles and Clauses apply for different circumstances and under different conditions, even though apparently some of them seem self-contradictory on the same issue.
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We need to select and cite the proper legal basis for our different claims, so that the claims would be more likely to be accepted and supported by the Chinese authorities.
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For further information, please contact:
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Tiger Zhang, Ella?Cheong (Hong Kong & Beijing)
tzhang@ellacheong.com
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