Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases (2019) 

16. Application of Article 32 of the Trademark Law

16.1 Scope of the prior rights

If a party concerned claims its legitimate prior rights and interests pursuant to Article 6 of the Anti-unfair Competition Law, then Article 32 of the Trademark Law may apply when hearing this case. The law providing the prior rights shall be generally taken as the basis for determining whether the application for registration of the trademark in dispute violates the prior rights of others.

16.2 Start time of the prior rights

If a party concerned claims that the application for registration of the trademark in dispute violates its “prior rights”, it shall prove by evidence that the prior rights have legally existed prior to the date of application for the trademark in dispute. If the prior rights do not exist at the time of approval of registration of the trademark in dispute, the prior rights will not affect the registration of the trademark in dispute.

16.3 Prior copyright of foreigners

If a foreigner claims that the application for registration of the trademark in disputeviolates its prior copyright, Article 2 of the Copyright Law shall apply.

16.4 Determination of damage to prior copyright

The determination of the damage of the application for registration of the trademark in dispute to the prior copyright of the party concerned shall take into account the following prerequisites: (1) the work involved constitute the object protected by the Copyright Law; (2) the party concerned is the copyright owner or the interested party of the work involved; (3) the application for the trademark in dispute may have access to the work involved prior to the date of application for the trademark in dispute; (4) the mark of the trademark in dispute is substantially similar to the work involved. If any of prerequisites as set out in the preceding paragraph is not met, it is not necessary to identify other prerequisites.

16.5 Determination of works

Any intellectual achievements which lack originality shall not be determined as works. The simple common graphics, letters and others are not determined as works generally.

16.6 Works exceeding the protection term

If a party concerned claims its copyright in connection with the work exceeding the term of protection provided in the Copyright Law at the time of application for registration of the trademark in dispute, this claim shall not be supported. In determining whether the mark of the trademark in dispute is substantially similar to the work in involved, the expression having entered the public domain and jointly used by both the mark and the work above will not be considered.

16.7 Determination of prior copyright ownership

The copyright-related manuscript, original, legal publication, copyright registration certificate prior to the date of application for the trademark in dispute, the certificate issued by the certification authority, the contract for obtaining the rights and others provided by the party concerned may be taken as the prima facie evidence for determining the ownership of prior copyright, unless the applicant of the trademark in dispute presents the evidence to the contrary. 16.8 Qualifications determination of the interested parties

If a party concerned claims that it is entitled to file an application as an interested party of the prior copyright pursuant to the trademark announcement, trademark registration certificate and so on, this claim may be supported.

16.9 Effect of originality on determination of “substantial similarity” 

If there is no basically visual difference between the mark of the trademark in dispute and a work with the less originality, the mark may be determined to be substantially similar to the work.

16.10 Defense of no damage to prior copyright

If a party concerned claims that the application for registration of the trademark in dispute does not harm the prior copyright of another person, this claim may be supported if: (1) the identical or similar part between the trademark in dispute and the work involved belongs to the information of public material and domain; (2) the reason why the trademark in dispute and the work involved are identical with or similar to each other is that they implement the common standard or the expression forms are limited; or (3) the identical or similar part between the trademark in dispute and the work involved is sourced from the works of the persons unconcerned, and the completion time of creation of works is earlier than the work involved.

16.11 Scope of prior copyright protection

If a party concerned claims that registration of the trademark in dispute shall not be approved or be declared invalid on the ground of damage to the prior copyright, the categories of the goods or services designated by the trademark in dispute shall not be considered.

16.12 Specific interests of protection of name rights

If a party concerned claims that the application for registration of the trademark in disputeviolates his/her prior name rights, it shall generally prove by evidence that the applicant of the trademark in dispute is aware of his/her name and applies for registration of the trademark by misappropriation, fraudulent use or other means. If the relevant public is inclined to believe that the goods using the trademark in dispute have the license or other specific relation with the natural person above, this trademark may be determined to fall under the circumstances provided in Article 32 of the Trademark Law.

16.13 Scope of the name

The name includes the name used in the household registered, alias, pen name, stage name, poetic name, nickname and so on. The subject identification expression which can establish a correspondence with a specific natural person may be deemed as the name of this natural person.

16.14 Effect of the reputation of a natural person on the name right

A natural person’s reputation is not a precondition for protecting his/her name right, but can be taken as a reference factor to determine whether the relevant public could establishe a corresponding relation between a name and a specific natural person.

16.15 Protection of portraiture right

If a party concerned claims that an application for registration of the trademark in dispute harms his/her portraiture right, he/she shall prove by evidence that the mark of the trademark in dispute has the sufficient personality features to enable the relevant public to believe that this trademark in dispute is corresponding to a specific natural person, as a result of which a stable correspondence is formed between this trademark and this natural person, and the relevant public thinks the goods with this trademark has the license and other specific relations with this natural person. The silhouette of the human figure does not contain the identifiable personality features of a specific natural person, if a party concerned claims that a trademark harms its prior portraiture right based on the silhouette, this claim shall not be supported.

16.16 Determination of prior corporate name right

If the short name or trade name of an enterprise has certain popularity and has established a stable correspondence with a party concerned, and the use does not violate the will of the party concerned, the party concerned may claim its prior corporate name right based on the reasons above.

16.17 Protection of foreign corporate names

If a foreign company’s corporate name, trade name or its usual transliteration has been used commercially in China, has had certain popularity and has been well known by the relevant public prior to the date of application for the trademark in dispute, then the party concerned may claim its prior corporate name right based on the reason above.

16.18 Expression of “commercialized” rights and interests

In the case that the law does not provide the “commercialized” rights and interests, it is not appropriate to directly use the “commercialized” rights and interests and other titles in the judgments.

16.19 Restrictions on determination of “commercialized” rights and interests

If the contents of “commercialized” rights and interests claimed by a party concerned can be protected as the name right, portraiture right, copyright, the product (service) name with certain impacts and other rights or interests expressly provided in laws, it is not appropriate to determine the “commercialized” rights and interests claimed by the party concerned. If other specific clauses other than Article 32 (“Prior Rights”) of the Trademark Law are insufficient to provide relief to the party concerned, and the “commercialized” rights and interests cannot be protected on the basis of the circumstances provided in the preceding paragraph, when the specific conditions are met, the “commercialized” rights and interests may be protected according to Article 32 (“Prior Rights”) of the Trademark Law as claimed by the party concerned, but shall be determined generally pursuant to the provisions of Article 6 of the Anti-unfair Competition Law.

16.20 Determination of “specific conditions” 

When determining a “protected object” falls under the “specific conditions” provided in Article 16.19 of these Trial Guidelines, the “protected object” shall fall under the following circumstances at the same time: (1) the “protected object” is the name of a work, the role name of a work, etc.; (2) the “protected object” has certain popularity prior to the date of application for the trademark in dispute; (3) the applicant registrant of the trademark in dispute is subjectively malicious;

(4) the mark of the trademark in dispute is identical with or similar to the “protected object”; and (5) the goods designated by the trademark in dispute fall under the scope involved in the popularity of the “protected object”, as a result of which the relevant public might well wrongly believe that the trademark in dispute is permitted by the owner of the “protected object” or has specific relations with the owner.

16.21 Application of malicious rush registration only to “unregistered trademarks” 

Article 32 of the Trademark Law provides that an applicant, by improper means, forestall the registration of a trademark that is already in use by another person and has certain influence, among which, the “trademark” means the “unregistered trademark”, including the trademarks whose registration application has not been filed or which has become invalid prior to the date of application for the trademark in dispute.

16.22 Applicable prerequisites of malicious rush registration

If an application for registration of the trademark in dispute is determined to fall under the circumstances of “use of improper means to forestall the registration of a trademark that is already in use by another person and has certain influence”, the trademark in dispute shall fall under the following circumstances at the same time: (1) the unregistered trademark is already in use and has certain influence prior to the date of application for registration of trademark in dispute; (2) the trademark in dispute is identical with or similar to the unregistered trademark in prior use; (3) the goods designated by the trademark in dispute is the identical category with or similar to those designated by the unregistered trademark in prior use; and (4) the applicant of the trademark in dispute knows or should have known the trademark which is in prior use by another person. If the applicant of the trademark can prove by evidence that it does not maliciously use the good will of the trademark in prior use by another person, its application shall fall outside the circumstances set out in the preceding paragraph.

16.23 Determination of “know or should have known” 

The following factors may be comprehensively considered to determine that whether the applicant of the trademark in dispute knows or should have known the unregistered trademark of another person: (1) the applicant of the trademark in dispute and the prior trademark user contacted with each other with respect to the trademark license, transfer and otherwise; (2) upon determination by the relevant organ, the applicant of the trademark in dispute has infringed upon trademark rights; (3) the applicant of the trademark in dispute and the prior trademark user belong to the same industry; and (4) the trademark in dispute is highly similar to the prior trademark with higher distinctiveness.

16.24 Judgment of “already in use” 

If a party concerned makes the “unregistered” trademark claimed by it playing the role in identifying the sources of goods through commercial advertising, production and management activities, the “unregistered trademark” shall fall under the circumstance of “already in use” provided in Article 32 of the Trademark Law. If the relevant publicity has established a connection between the “unregistered trademark” and the party concerned, which does not violate the subjective will of the party concerned, the “unregistered trademark” may be determined to fall under the circumstance of “already in use”. 

16.25 Judgment of “certain influence” 

If a party concerned proves by evidence that the popularity of its prior unregistered trademark is sufficient to enable the applicant of the trademark in dispute to know or should have known existence of the prior unregistered trademark, the prior unregistered trademark may be determined to have “certain influence”. If the evidence of the prior unregistered trademark provided by the party concerned, including the duration of use, region, sales or advertising, is sufficient to prove that the prior unregistered trademark is known by the relevant public within certain scope, then the prior unregistered trademark may be determined to have “certain influence”.

16.26 Determination of pure export behavior

If the goods using the prior unregistered trademark are directly exported without being circulated in China, and a party concerned claims that the application for registration of the trademark in dispute should fall under the circumstances of “use of improper means to forestall registration of a trademark which is already in use by another person or have certain influence” provided in Article 32 of the Trademark Law, this claim shall not be supported.

17. Application of Article 44.1 of the Trademark Law

17.1 Determination of “fraud” 

An application under the following circumstances may be determined to fall under the circumstances of “obtained by fraud” provided in Article 44.1 of the Trademark Law: (1) the applicant of the trademark in dispute has the subjective willingness to make the administrative organ having misconceptions by fraud; (2) the applicant of the trademark in dispute obtains the trademark registration from the competent trademark administrative organ by deceptive means; and (3) the administrative acts taken by the administrative organ with misconceptions are based on the acts of the applicant of the trademark in dispute, and there is a direct causal relation between such two acts. 17.2 Determination of “other improper means” 

“Other improper means” mean the acts that disrupt the trademark registration order, harm public interests, improperly occupy public resources or seek illegitimate interests in ways other than the fraud for the purpose of obtaining the registration of the trademark in dispute, including the acts taken by the applicant of the trademark in dispute to forestall registration of others’ trademarks with certain market popularity in large-scale and extensive manners. An application meeting the following prerequisites may be determined to fall under the circumstances of “obtained by other improper means” provided in Article 44.1 of the Trademark Law: (1) the applicable subject is the application registrant of the trademark in dispute, unless there is evidence to prove that the registrant and the applicant of the trademark in dispute have a specific relation, or there is a meaning connection for the application of registration of the trademark in dispute; (2) the applicable object includes the registered trademark and the trademark under application; (3) the application disrupts the trademark registration order, harms the public interests, improperly occupies the public sources or otherwise seeks illegitimate interests; (4) the trademark may not only violate certain civil law rights and interests.

17.3 Determination of specific circumstances of “other improper means” 

A trademark under any of the following circumstances may be determined to fall under the circumstances that “the registration is obtained by other improper means” provided in Article 44.1 of the Trademark Law: (1) the applicant of the trademark in dispute applies for registration of multiple trademarks which are identical with or similar to others’ trademarks with the higher distinctiveness or popularity, including the application for registration of trademarks of the different owners on the identical or similar goods or services and also the application for registration of trademarks of the same owner on the non-identical or dissimilar goods or services; (2) the applicant for the trademark in dispute applies for multiple trademarks which are identical with or similar to any other corporate names, names of social organization, the names, packaging, decoration and commercial signs of goods with certain influence; or (3) the applicant of the trademark in dispute sells the trademark, or file a bring infringement lawsuit against the users of the prior trademark after failing to transfer at a high price.

17.4 Exceptions to specific circumstances of “other improper means” 

If an applicant of the trademark in dispute is under the circumstances provided in Article 17.4 of these Trial Guidelines, but the trademark in dispute is earlier applied and there is evidence to prove that the applicant of the trademark in dispute has a true intention to use such trademark and actually puts it into commercial use, then the trademark in dispute may, according to the specific circumstances, be determined to fall outside the circumstances of “the registration is obtained by other improper means”.

17.5 Restrictions on application of the “other improper means” 

When hearing an administrative case of review of unapproved registration and request for invalidation of trademark rights, if the application of the party concerned can be supported by applying other clauses of the Trademark Law according to the documented evidence, Article 44.1 of the Trademark Law shall not apply.

 photo from: Beijing High People's Court