Mr. Jason Wang, Partner at Beijing East IP Law Firm, recently published the Article The Conflict of Enterprise Name and Prior Trademark – Analysis on Article 58 of the new Chinese Trademark Law on Issue 12 of the 2013 China Trademark Magazine. The China Trademark Magazine is a monthly magazine supervised under the State Administration for Industry and Commerce (SAIC, who oversees Chinese Trademark Office and Trademark Review and Adjudication Board) and hosted by the China Trademark Association. This is the third article Mr. Wang has published on China Trademark magazine in the year 2013. The main content of the article is as follows:

The newly added Article 58 of the new Chinese Trademark Law stipulates that, “where a registered trademark or an unregistered well-known trademark of others was used as the trade name, which tends to mislead the public and constitute acts of unfair competition, it shall be handled in accordance with the Chinese Anti-Unfair Competition Law.” The issue of conflicts between trade name and prior trademark is quite complicated, and Article 58 of the new Chinese Trademark Law has expressly stipulated the guidelines of the solutions. However, as for the interpretation and law application of the newly added provision, they still need to be clarified via the regulations such as Implementing Regulations of Chinese Trademark Law as well as via the practice in the future.

1. How to interpret “use as the trade name”?

The first question is whether the “use as the trade name” refers to use of the trade name in a prominent way.

The second question is whether the “use as the trade name” refers to use the trade name in a non-prominent way.

The third question is whether the “use of the trade name” covers the “registration” of the trade name in addition to “use” of the trade name.

2. How to interpret “a registered trademark or an unregistered well-known trademark of others”?

The first question is whether the “registered trademark” covers the well-known registered trademark? Whether the Article 58 of the new Chinese Trademark Law covers the conflict between the trade name and the registered well-known trademark?

The second question is whether the conflict between the trade name and the registered well-known trademark involves with cross-Class protection? Whether the same wording of “mislead the public” stipulated under both Article 58 of new Chinese Trademark Law and Article 13(3) of new Chinese Trademark Law (Article 13(2) of the current Chinese Trademark Law) has the same interpretation? And how to interpret?

The third question is how to apply the laws to the conflict between the trade name and the registered well-known trademark: Apply merely the Chinese Anti-Unfair Competition Law, apply merely the Chinese Trademark Law, or apply both the Laws?