By King & Wood’s Intellectual Property Group

Pursuant to the judicial interpretations enacted by the Supreme People’s Court of China in February 2008, if a prior registered trademark owner files an infringement lawsuit against the use of a latter registered trademark, courts will refuse to accept the case. The prior trademark registrant must first initiate a trademark dispute action with the China Trademark Review and Adjudication Board (TRAB) to invalidate the latter registered trademark. The are various reasons that may prevent the latter registered trademark from being invalidated within a short period of time, making it difficult for the prior registrant to prevent continued infringement by the latter mark in a timely manner.

However, before the filing date of the registered infringing trademark, if the owner has obtained other rights, such as copyright, trade name rights, rights of portrait, individual’s naming rights, design patent rights, etc. to the mark, based on such prior rights, an infringement lawsuit can still proceed against the latter registered infringing mark. Thus, the owner may be able to prevent further infringement of its mark without being subject to the delays involved in the TRAB process.

In recent years, courts across China have issued several judgments supporting prior copyright owners’ infringement claims against latter registered trademarks. For example, in January 2007, Coach Inc. ("Coach") brought a copyright infringement lawsuit against Guangzhou Huani Co. Ltd. and other 3 companies and individuals who produced or sold bags, purses, and other items bearing Huani’s registered trademark seen here: No. 1927601, which was found to be a bad faith imitation of Coach’s famous trademark and artistic work seen here: . To prove its prior copyright, Coach provided magazine advertisements for the same goods bearing the trademark and artistic work above, which they launched in the US, Hong Kong and Mainland China, as well as the copyright registration certificate issued by China Copyright Protection Center (CCPC) with the creation date of the work. Coach also submitted punitive decisions issued by Administrations for Industry and Commerce ("AICs") relating to the defendant producing counterfeits of Coach products and the defendant’s misleading promotional websites, so as to prove bad faith. In the end, the court agreed with Coach’s view and ordered the defendant to stop using its latter registered trademark because it infringed upon Coach’s prior copyright. The defendant was also ordered to pay RMB300,000 in compensation to the plaintiff.(Written by Hua Yang, Connie Zhuang and Yuexin Xiao)