Discussion related to Article 7 of China Trademark Law
date: 2021-02-01 Rui Tang Read by:

    Recently, the author received a decision the opposition decision against the trademark "NAVAGE" under the App. No. 33765455 from the National Intellectual Property Administration. Next, I would like to discuss with you the clause of the "good faith" principle cited in the opposition decision.


    The National Intellectual Property Administration’s decision for not approving the trademark mentioned “our office believes that the opposed party’s application for registration of the opposed trademark has the subjective malice of duplicating or imitating the opposing party’s trademark, which violates the principle of good faith. If the opposing trademark is approved, it is easy to cause the relevant public misunderstand the source of the goods."


    I believe that seeing this, as a professional trademark agent, you already know that the National Intellectual Property Administration cited the provisions of Article 7 of the "China Trademark Law" and finally rejected the application for registration of the opposed trademark.


    But for ordinary consumers, what exactly Article 7 of the "China Trademark Law" is? What role does it play in trademark review?


    According to Article 7 of the "China Trademark Law": When applying for registration and using a trademark, the principle of good faith should be followed. Intellectual property, as the property relationship between equal civil subjects, belongs to the category of civil law in terms of legal norms. So, how is the principle of good faith stipulated in the civil law? According to Article 7 of the General Principles of the First Part of the Civil Code of the People's Republic of China, civil entities shall follow the principle of good faith, uphold honesty, and abide by promises when engaging in civil activities. Generally speaking, it is honesty and trustworthiness. Within the scope of commercial activities, do not deceive and value credit. Specifically, it is embodied in trademarks that the one only can register their own trademarks but cannot register others' trademarks, and the order of trademark registration cannot be disturbed. As the imperial clause in the civil and commercial rules, in many cases, there is no clear stipulation on the specific application of the principle, so how to apply it in a specific case?


    In the opposition decision received by the author, when the opponent filed an application for opposition, the opposed party only registered the trademark opposed. Generally speaking, in this case, it is difficult to determine that the opposed party violated the principle of good faith. In the opposition action against the trademark, we argued the originality and the same of the two parties’ marks.  At the same time, we also submitted the QQ communication content with the opposed party’s agent, discussing trademark transfer matters. In this communication, the other party directly said the buyer’s location after knowing the buyer’s name. It is very clear that the other party already learnt the opponent. Moreover, the trademark that the oppose party applied for registration is exactly the same as the trademark with strong distinctiveness of the opponent, so it can be initially determined as malicious. We also searched the Internet for some evidence of the opponent’s use in China, which proved that the goods designated for use by the opposed mark were the commodities used by the opponent first. Based on the above, the National Intellectual Property Administration believes that the registration of the opposed trademark violated the principle of good faith and ultimately refused to approve the application for registration of the opposed trademark.


    From the above point of view, the main point that the National Intellectual Property Administration to determine the opposed trademark violates the principle of good faith is 1) the cited mark enjoys high originality and the opposed mark and the cited mark are identical; 2) the use of the cited mark in mainland China enable the cited mark enjoys certain reputation; 3) it can conclude from above two aspects that the opposed party filed the mark in bad faith and violated good faith principle and will cause confusion over goods origin.


    In short, the principle of good faith is a transparency provision. In the case of arguing that others are malicious, the facts should be clear and the evidence should be sufficient. Otherwise, it is still difficult to determine under normal circumstances.

    

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