Legal grounds for combating pirated trade marks

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(Author: Dr. Jian Xu, the China IP Blogger)

Once a pirated trade mark is identified, the legal solution is to either initiate trade mark opposition proceedings if the mark is advertised but not granted, or trade mark cancellation if the mark is granted. To start, there are three categories of legal grounds for attacking a pirated trade mark through trade mark opposition or cancellation.

Category 1: Inherent Deficiency

Inherent deficiency means either the mark itself is contrary to the legal requirements, or the registration itself is fraudulent. This category of grounds corresponds to Art. 10~12 of the Chinese Trade Mark Law.

(i) The mark uses prohibited symbols, e.g. symbols identical with or similar to the State name, national flag, national emblem, landmark buildings, etc.

(ii) The mark uses non-distinctive symbols, e.g. symbols referring to product names, models, designs, quality, raw materials, function, use, weight, quantity, etc.

(iii) Three-dimensional mark is derived from the nature of the product, etc.

(iv) Fraudulent means have been employed during application for registration.

Category 2: Outward Deficiency

Outward deficiency means the mark is similar to an earlier mark, or in conflict with others’ prior rights. This category of grounds relates to Art. 13, 15, 16 and 31 of the Chinese Trade Mark Law.

(i) The mark is a reproduction, imitation or translation of the well-known trade mark. A distinction is to be made between well-known trade marks registered in China and those unregistered in China, where the former extends protection to dissimilar goods while the latter only confers protection to similar goods.

(ii) An unauthorised agent or representative registers a trade mark under their own name rather than the name of their principal.

(iii) The mark contains a geographic indication of the goods and the goods are not from the region indicated, thereby misleading the public.

(iv) The trade mark is in conflict with the prior right of others, or is “squatting”, i.e. unfair means are employed to pre-emptively register others’ in-use trade mark with certain reputation.

Category 3: Use Deficiency

Use deficiency means the registered mark is either improperly used or not used. This category only applies to revocation of trade marks and links with Art. 44~45 of the Chinese Trade Mark Law

(i) The registered trade mark has not been used for three consecutive years.

(ii) The trade mark owner, without going through the required application, alters the mark, changes the registrant details or makes assignment.

(iii) The trade mark owner is dead or ceases to exist and the trade mark has not been transferred.

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