Prior Rights in the Chinese Trademark Law

Abstract

China’s new Trademark Law came into effect in May of 2014. One of the most important revisions to the Trademark Law is the addition of a specific mechanism whereby prior right holders may challenge the registration of trade marks. This article provides a critical analysis of prior rights under China’s 2013 Trademark Law. The first section introduces and analyses the concept of prior rights and the new opposition procedure. The second section assesses the scope of prior rights and the protection afforded to prior right holders. The third section analyses the circumstances whereby prior right holders may face difficulties challenging later trade mark registrations, especially those that have already acquired considerable market reputation. The final section offers some conclusions and policy recommendations.

This article argues that the name right should be limited to those owned by famous figures. Otherwise, the scope of name right is too broad because some Chinese names are quite common. Moreover, the concept of "passing off" could also be introduced as a mechanism to deter registration. In the UK, a mark can be cancelled when a right holder (1) enjoys protectable goodwill or reputation in the country; (2) there is a relevant misrepresentation; and (3) there is likelihood of damages. Introducing this concept to China’s Trademark Law could broaden the protection available to prior right holders and clarify some of the ambiguities found in the 2013 law. As China already recognises this concept under its Law Against Unfair Competition, applying it in the context of trade marks would be a logical extension.

Keywords: prior right, trade mark, passing off, China, defences, grounds for opposition