Remedies for the Trademark Registered as the Other Party’s Enterprise Name

A well-known trademark is registered as the enterprise name by the other party, which brings the conflict between trademark right and enterprise name right, this circumstance is not rare. For the relevant legal issues, the trademark owner shall pay attention to 2 main aspects: (a) the standard on identifying whether the enterprise name has infringed trademark right; (b) the remedies.

“Trademark Law” amended in 2008 (“Original Trademark Law”) and the relevant regulations have not stipulated a clear and definite standard on identifying such issues, nor stated distinct remedies, which result in the difficulties for the trademark owner to protect its right. “Trademark Law” amended in 2013 (“New Trademark Law”) has adjusted the standard and the remedies’ basis to a certain extent, however, the practical principle shall be figured out after the implementation.

Firstly, for the standard, Original Trademark Law, Article 52 has stipulated the regulations on the infringement of trademark, which says causing other damages to the right to exclusive use of a registered trademark of another person. “Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks”, Article 1 has stipulated that the acts shall be the acts of causing other damages to the registered trademark of other people as provided in Article 52, Item 5 of the Trademark Law, including, (a)using the words that are identical or similar to the registered trademark of any other person as the name of one’s enterprise on identical or similar goods so that the relevant public are liable to be misled. ……

In addition, “The Guiding Opinions on Several Issues Concerning the Trial of IP Disputes Cases Involving Rights Conflict (for Trial Implementation)”, Article 7 has stipulated that the circumstances that the party use words identical with or similar to the trademarks of others prominently on identical or similar goods likely to cause public misidentifications, Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks shall be applied. In view of this, the precondition for the trademark owner to claim are, (a) the same or similar words; (b) on the same or similar goods; (c) prominently use; (d) public misidentifications. Because there is no clear and definite standard, except (d), (c) is an important dispute in individual cases.

Particularly, there are special provisions on the service trademark and well-known trademark. Opinions on Resolution of Several Issues Concerning Trademarks and Enterprise Names, Article 5, Item 2 has stipulated that the infringements of trademark include using a word on the same or similar service, which is identical with or similar to another’s registered trademark, and causes public misidentifications. Provisions for the Determination and Protection of Well-known Trademarks, Article 13 has stipulated, where a party believes that another party has registered his or its well-known mark as an enterprise name, which is likely to deceive or mislead the public, he or it may apply to the competent authority for the registration of enterprise names for the cancellation of the registration of the enterprise name in question. The competent authority for the registration of enterprise names shall deal with the case in accordance with the Provisions for the Administration of the Registration of Enterprise Names. So where the service trademark or well-known trademark is used as the enterprise name, the regulations do not require “prominently use”.

New Trademark Law, Article 58 has stipulated that using the words same as other party’s registered trademark or unregistered well-known trademark, which cause public misidentifications, it shall be deemed as unfair competition acts, which shall be dealt with in accordance with Anti-Unfair Competition Law. The new provision does not require “prominently”, nor stipulate that the enterprise shall sell or produce the same or similar goods. In view of this, the Burden of Proof lies with the trademark owner maybe lighten, which may be good for the trademark owner to investigate for legal liabilities when the other party uses trademark owner’s trademark as its enterprise name.

Secondly, for the remedies, Original Trademark Law, Article 53 has stipulated 3 means, consultation, administrative means (Administration of industry and commerce is responsible for this), lawsuit.

On administrative means, Opinions on Resolution of Several Issues Concerning Trademarks and Enterprise Names, Article 9 has stipulated that, where a case of confusion of a trademark with an enterprise name occurs in the same provincial administrative region, it shall be dealt with by the administration for industry and commerce of the province. If it is a case involving more than one provincial administrative region, it is handled by the State Administration for Industry and Commerce (SAIC). Cases in which protection of exclusive trademark right is claimed are handled by the enterprises registration departments of the administration for industry and commerce at or above provincial level. Where an enterprise name should be changed, after the competent department handles the case together with the administrative authority for trademark affairs according to the provisions relating to the registration and administration of enterprise names, the name shall be changed with the approval by the competent authority for enterprise names and submitted, for filing, to the Trademark Office and the Enterprise Registration Office of SAIC. In addition, for the well-known trademark, according to Provisions for the Determination and Protection of Well-known Trademarks and relevant regulations, the trademark owner shall be entitled to file a request to the enterprises registration departments of the administration for industry and commerce on cancelling the registration of this enterprise’s name.

On lawsuit, “The Guiding Opinions on Several Issues Concerning the Trial of IP Disputes Cases Involving Rights Conflict (for Trial Implementation)”, Article 11 has stipulated that, where the court determines that the party has infringed other party’s registered trademark, or other unfair competition acts by abusing words in its enterprise name, except the civil liabilities, the court shall be entitled to order it to change its enterprise name or stop using its enterprise name. 5 years after the party’s enterprise name has been registered, if the trademark owner claims under the preceding paragraph, the court shall not support the claim, except for malicious acts. In view of this, the trademark owner can file lawsuit to the court to make the other party change or stop using the enterprise name.