Supreme Court clarifies trademark issues in new guidelines


The Supreme Court has issued Judicial Opinion 2011/18 - "Opinion on How to Exploit Intellectual Property Trials to Enrich Socialist Culture and Develop a Self-Reliant and Balanced Economy" - to provide guidance to the Chinese courts in IP cases.

Articles 18 to 23 of the opinion deal with trademark issues:

  • Article 18 (pre-emptive registration and imitation of known brands): the courts should revoke pre-emptive trademark registrations filed in bad faith and stop the imitation of known brands by assessing whether the trademark registrant had the intention to use the trademark truthfully, and whether the registrant's actual use of the trademark was in good faith.
  • Article 19 (similarity of trademarks): the courts should recognise that there may be some special circumstances in the market and tolerate the co-existence of some brands to achieve “inclusive development”.
  • Article 20 (similarity of goods): the courts should take full consideration of the relationship of the goods in the market in order to determine whether they are similar.
  • Article 21 (well-known trademarks): the scope of protection should be based on the distinctiveness and reputation of the trademark at issue. The more distinctive and reputed the brand, the greater its scope of protection.
  • Article 22 (affirmative defence of 'prior use'): the courts should recognise the affirmative defence of 'prior use' where the plaintiff has filed a pre-emptive registration in bad faith (for further details, please see "Judicial opinion provides breakthrough for prior use defence").
  • Article 23 (streamlining procedures): the courts should encourage the resolution of disputes in trademark prosecution and avoid the mechanical enforcement of the procedural laws (for further details, please see "New Supreme People's Court's opinion should benefit trademark owners").

On the whole, these provisions should have a positive impact on the judicial protection of trademarks. However, Article 19, which concerns the similarity of trademarks, seems to place too much emphasis on maintaining the status quo of "co-existence". Arguably, this approach might not help the courts determine whether trademarks are similar, and may have negative side effects.

Shuhua Zhang, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing 

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