Could A Prior User Constitute Trademark Infringement against the Exclusive Right Holder of a Registered Trademark?


(By Luo Yanjie) Our former trademark laws had not yet stipulated whether a prior user constituted trademark infringement against the exclusive right holder of a registered trademark. However, the implementation of the update Trademark Law this year solved the problem. In today’s post, we will introduce a typical case concerning the prior user succeeded in competing against the exclusive right holder. Even though the case was judged before the implementation of the update Trademark Law, its judgment was kept pace with legislative purpose of the update Trademark Law.


Uber’s China Imitator Didi Taxi Meets Trademark Problems

Why could an Unregistered Trademark Obtain Protection in Beijing Higher People’s Court?

(By Luo Yanjie) Abstract: To judge whether two goods are similar, generally is ruled upon the basis of the Chinese Goods and Services Classification and then on the courts’ interpretation of different cases and facts. The trademark application shall not be a means to register a mark that is already in use by another party and enjoys substantial influence, and shall also not infringe upon another party’s prior existing rights.

The statement “Goods and service are similar” refers to the goods and services that are associated with each other and thus are likely to produce confusion among the relevant public (our previous post, Why the “NEXT” Trademark could Receive Cross-class Protection in China had introduced similar problems), in which the actual situations conflict with the Chinese Goods and Services Classification of the Chinese Trademark Office (the “CTMO”). In today’s post, we would like to introduce a typical case.


Why the “NEXT” Trademark could Receive Cross-class Protection in China?

next trademark

(By Luo Yanjie) Abstract: Generally, two goods that fall into the same similar group constitute similar goods. “Similar goods” refers to the goods that are identical in such respects as the function, purpose, industry, sales channel and consumers; or goods that are likely to lead the relevant public into thinking they are associated with each other and cause confusion.

Trademark registration in China applies the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the “Nice Classification”). Every year the State Trademark Office in China will update the Chinese Goods and Services Classification in accordance with the Nice Classification. A trademark shall be registered in accordance with the Chinese Goods and Services Classification. When a trademark dispute brought to a court, the Chinese Goods and Services Classification is not used only as a reference for judgment of similar goods or services.


Abuse of Internet keywords in Competitive Bidding may Constitute Trademark Infringement

(By Luo Yanjie) Abstract: Using another’s trademark as a promotion keyword in Baidu’s competitive bidding may constitute trademark infringement and unfair competition. The contents of “sale promotion (for others)” refer to providing advice, planning, promotion and consulting for others to sell goods or services, and does not include, in particular, enterprises whose main function is to sell goods, namely, activities of commercial enterprise.

   With the widespread use of Pay Per Click (the “PPC”) promotion, related legal problems also surface. In recent years, there are many trademark infringements regarding the bidding service of keyword PPC. The case in today’s post is a typical one considering the bidding service of keyword PPC as follows.


How does the U.S. Government Guide Companies Registering IPR in China?

(By You Yunting) This March, at the invitation of the U.S. government, Mr. You Yunting, the founder of Bridge IP Commentary began his journey to the United States. The main purpose of this visit was to better understand the system of intellectual property rights in the United States. Mr. You would like to share with our readers his experiences there in several posts here on our website. Of course, the content of the posts may not be truly comprehensive or strictly accurate; that being said, if you find any mistakes or comments that can be corrected or improved upon, please let us know. We encourage more dialogue with the IPR community and welcome all constructive commentary. The following is the first post in a series of Mr. You’s visit to the United States: 


How to Decide Infringement When Conflict between Trademark and Trade Name in China?

By Luo Yanjie

As two different concepts in law, trademark plays the role as to distinguish the origin of the product or services, and the trade name is the literal expression to indicate different companies. But in the daily operation, we may see the confusion between these two concepts, and the trade name may also be used as kind of mark in business. Naturally, we see many companies choose to register their name as the trademark. Despite the similar function of them, the trademark and trade name are verified by different administrations (the mark is subject to the administration of trademark office, and the trade name is ruled by local administration of industry and commerce), but that also triggers the conflict between two objects. In today’s post, we would like to analyze the conflict occurred when trade name registered prior to the trademark by different subjects.


Attention matters on Registration of Game Trademark in China

With the development of Internet, the video game once again gains the popularity. For instance, the well known “Angry Bird” has enjoyed a global download volume of more than 500 million times, and the name of it has been widely known as a brand. Therefore, more and more game companies choose to register the game name as trademarks in order to protect their brands. And the followings are the tips from Bridge IP Law Commentary in trademark registration:

I. What kind of game names can be registered as trademarks?