|June 12, 2012|
One of the six sections of the Opinions refers to the courts’ role in protecting trademarks in China, mainly focusing on the following:
- Tackling trademark squatting:
The Opinions show that the courts intend to tackle the preemptive registering of trademarks in bad faith and the imitating of famous trademarks. When dealing with trademark squatting cases, the courts must analyze whether the trademark applicants have the real intention to use the trademarks. In cases of trademark imitation, they must consider issues such as bad faith in the actual use.
- Determining the similarity of trademarks:
When determining the similarity of trademarks, the courts must first compare the trademarks concerned as a whole: if the trademarks are not similar as a whole and if the trademark seeking protection is far more famous than the infringing one, the courts must then compare the major elements of the trademarks. If both the trademark of the party claiming alleged infringement and the infringing party’s trademark are relatively well known or their co-existence results from special situations or historical reasons, the courts shall then also consider factors such as the actual use of the trademarks, the history of their use, recognition by the public and the subjectivity of the trademark users.
This said, the Opinions also establish that, when comparing the elements of trademarks, the courts must respect (i) the special situations under which trademarks with similar elements co-exist, (ii) the existing market structure, and (iii) the inclusive development of different business operators. Therefore, the courts must not simply equate the similarity of the elements of trademarks with the similarity of trademarks, which might cause uncertainty when determining similarities.
- Protecting well-known trademarks:
The scope and level of protection available to well-known trademarks are deter-mined by the distinctiveness and popularity of those trademarks. The courts may ease the burden of proof of the owners of well-known trademarks if these trade-marks are very popular with the general public.
The Opinions also require the courts to carefully scrutinize issues during pre-trial examination, to prevent trademark owners from filing false lawsuits seeking the legal recognition of well-known trademarks, a process believed to be less time-consuming than the process to obtain administrative recognition.
- Applying affirmative defense of prior use:
In cases of trademark squatting, copy, imitation or translation of a well-known trademark already in use but not registered in China, the user of the trademark already in use alleged to be an infringing party can plea to the courts using the defense of prior use.