Five common misunderstandings about trademark litigation in China
date: 2020-09-29 Echo Xu, Alexandra Chopenko Read by:

Misunderstanding 1I registered my trademark. If someone else was using my trademark without authorization and I begin litigation proceedings against them, it will of course be ruled as infringement!

-         Generally, use of a trademark without authorization is considered infringement,


-         Legal provisions for proper use are outlined in the China Trademark Law: "The exclusive right owner of a registered trademark may not prohibit others from rightful use of the generic names, models or designs of the goods, or direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods, or geographical names as included in the registered trademark."

As the registered trademark itself lacks distinctiveness, others’ use of the trademark is justified and reasonable, and does not constitute an infringement of the registered trademark.

-         Legal provisions on prior use are outlined in the China Trademark Law: "Where an identical or similar trademark with certain influence has been used, prior to the use by the trademark registrant, with respect to the same goods or similar goods by others before the trademark registrant's application for trademark registration, the exclusive right owner may not prohibit the user of the aforesaid trademark from continuous use of such trademark within the original scope but may request its user for addition of proper logos for distinction purpose.”

The establishment of the prior-use system is a supplement to the trademark registration system. It reserves the space for the previous user to use within the original scope and requires the trademark registrant to tolerate the continued use of the previous user.

In addition to the above legal provisions, malicious litigation is also an exception to the judicial protection of registered trademarks. Malicious lawsuits as a way to combat trademark squatting have recently become a hot topic. Due to the improper nature of the acquisition of trademark rights, litigation rights protection may be regarded as improper claims of rights, thereby causing damage to the interests of others, which constitutes malicious litigation. In the trial of a specific case, the trademark right was not only denied by the court, but also faced with a counterclaim and would bear high compensation.

Misunderstanding 2 – Our company’s proprietary brand has been registered and used on automotive products, but it was discovered to be used on clothing (or other items not related to automobiles). Such improper use must constitute infringement of our trademark rights!

-         This understanding is not necessarily wrong. The reason why this is considered to be one of the misunderstandings is that the arrive at this result requires conditions, that is, your company’s brand is very distinctive and well-known enough to reach a well-known status. It is possible to obtain cross-class protection even when the degree of similarity of the goods is not high. After all, automotive products and clothing still have a large span. The concept of a product is different from a brand. A registered trademark has the scope of approved products on which it can be used, and the scope of protection of ordinary registered trademarks is also limited to the same and similar products. Only well-known trademarks can protect the rights of different and similar products using the same or similar trademarks. Even well-known trademarks need to consider the degree of similarity of the goods. If the span is large, it will not mislead the public and it is difficult to determine infringement.

-         Relevant judicial interpretation can be found in Article 13 of "Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases for the Authorization and Confirmation of Trademarks”:

“Where a party claims that a disputed trademark constitutes reproduction, imitation or translation of a famous trademark registered and should not be registered or should be invalidated according to paragraph 3, Article 13 of the Trademark Law, the People's Court shall give comprehensive consideration to the following factors, to determine whether the use of a disputed trademark is sufficient to make the relevant public to believe that there is a considerable degree of connection with the famous trademark, thereby misleading the public and resulting in possible harm to the interests of the registrant of the famous trademark:

    (1) the distinctiveness and popularity of the reference trademark;

    (2) whether a trademark sign is sufficiently similar;

    (3) the information on the commodity designated to use the trademark;

    (4) the degree of coincidence and attention of relevant public; and

    (5) the information on the lawful use of a sign similar to the reference trademark by other market participants or other relevant factors.

Note: Although the above decision is in response to an administrative cases of trademark authorization and confirmation, the same principles apply to similar trademark civil suits.

Misunderstanding 3 – Another party brought an infringement lawsuit against me, but because I have already registered a trademark the lawsuit will be decided in my favor!

The use of registered trademarks generally does not constitute trademark infringement, unless it is the duplication, imitation, translation of well-known trademarks, or improper use of registered trademarks.

-         Relevant judicial interpretation can be found in Article 11 of Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving the Protection of Well-Known Trademarks: “If the registered trademark used by the defendant is a copy, imitation or translation of the plaintiff’s famous trademark and if a trademark right infringement is constituted as a result of violation of Article 13 of the Trademark Law, the people’s court shall, upon motion of the plaintiff, make a ruling on enjoining the defendant from using the said trademark”

-         Relevant judicial interpretation can be found in Paragraph Two of Article 1 of Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Civil Dispute Cases Involving Conflicts between Registered Trademarks, Enterprise Names and Prior Rights: “…In case the lawsuit is filed on the ground that a registered trademark used by other party beyond the approved scope of commodities or by changing the dominant features of the trademark, splitting it or combining it with others is identical or similar to the registered trademark of the plaintiff, the people's court shall accept it.”

Misunderstanding 4 – Someone else registered a trademark that uses my product packaging and decoration, using my trademark on the packaging. This will not constitute trademark infringement.

The use of trademarks includes the use of trademarks in product packaging. The use of other people's registered trademarks for product decoration, especially those with a certain degree of popularity and distinctiveness, is more likely to be recognized as trademark infringement.

Relevant judicial interpretation can be found in Article 48 of China Trademark Law: “The use of trademarks herein refers to such activities as using trademarks on goods, goods packaging or containers and goods transaction documents, or using trademarks in advertising, exhibits and other commercial events so as to identify the sources thereof.” and

in Article 76 of Regulations for the Implementation of the Trademark Law:The use of a sign identical with or similar to a registered trademark of any other person on identical or similar goods as the name or decoration of the goods, which misleads the public, shall be within the meaning of infringing upon the right to exclusively use a registered trademark as mentioned in Article 57 (2) of the Trademark Law”;


Misunderstanding 5 - The sole use of the company's name was sued for infringing on the registered trademark rights of others, but my company name was approved and registered by the Bureau of Industry and Commerce, which does not constitute trademark infringement!

In the case of conflict between a trademark and a business name, the principle of first protection generally applies. Even if it is a legally registered enterprise name, if the registration is later than the trademark registration date, the prominent use of the enterprise name on the same or similar goods may easily lead to misidentification and constitute trademark infringement. If it is not used prominently, but is liable to cause misunderstanding, it constitutes unfair competition.

Relevant judicial interpretation can be found in Article 1 of Interpretation of the Supreme People's Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks: “The following acts shall be the acts of causing other damages to the registered trademark of other people as provided in Article 52, Item 5 of the Trademark Law:

a.      Using the words that are identical or similar to the registered trademark of any other person as the name of one's enterprise on identical or similar commodities so that the relevant public are liable to be misled.;

and in Article 58 of Trademark Law: “Using characters of the registered or unregistered well-known trademarks of others in the name of an enterprise to mislead the public that constitutes unfair competition shall be subject to the Anti-Unfair Competition Law of the People's Republic of China.”