Author: Jason WANG, Beijing East IP Law Firm
*Originally posted on website of Judicial Protection of IPR in China on April 16, 2014
http://www.chinaiprlaw.cn/file/2014041632305.html

Article 31 of the Chinese Trademark Law states that “using unfair means to preemptively register the trademark of some reputation of another person has used” shall not be registered.　According to the provision’s language, fame of the prior mark and the bad faith of the trademark applicant are the two applicable elements of the bad faith filing prescribed by Article 31. However, what other factors should be taken into consideration when applying these two elements? The author hold the view that a trademark’s trademark inherent distinctiveness is the premise and an important factor to be considered.

First, from the legislative perspective of the Chinese Trademark Law, the mark’s register-ability provision (absolute grounds) and conflict of interest provision (relative grounds) are the two fundamental factors to whether a mark can eventually obtain registration.

Second, from the perspective of the applicable law’s consequence of order, the register-ability provision of the mark (including trademark distinctiveness provision) should be applied prior to the conflict of interest provision, and the absolute grounds provisions should be applied prior to the relative grounds provision.

Third, from the perspective of judicial interpretations on protection of unregistered trademarks, the regulation of unregistered well-known mark shall follow the bad faith filing provision of “the trademark of some reputation of another person has used” under Article 31 of the Chinese Trademark Law.

Fourth, from the perspective of judicial practice and trail of relevant cases, a mark’s register-ability (including trademark distinctiveness) shall be the premise of bad faith filing under Article 31 of the Chinese Trademark Law, and marks that violated the prohibited regulations are not applicable under the same rule.