By Ding Xianjie Yang Hua   King & Wood Mallesons’ Trademark Group

According to Chinese Trademark Law, the party concerned in cases involving granting or determination of trademark rights against the decisions of the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce (SAIC) must bring an administrative proceeding to the First Intermediate People’s Court of Beijing Municipality. The second instance made by the Higher People’s Court of Beijing ( “Beijing Higher Court“) is a final judgment.

Recently, Beijing Higher Court publishes the Guidelines of Trial of Administrative Cases Involving Granting and Determination of Trademark Rights (the “Guidelines“), which includes 30 Articles concerning the issues on recognition and protection of well-known trademarks, recognition and protection of geographical indications, determination of confusion and misidentification, protection of prior rights of copyright and rights to names, as well as the relevant court trial procedures under circumstances that the business license of a party has been revoked but the party has not gone through the termination formalities of its company. The main points are as below.
Continue Reading Notice of the Higher People’s Court of Beijing on Guidelines for Trial of Administrative Cases Involving Granting and Determination of Trademark Rights

By King & Wood Mallesons’ Trademark Group

Registering a foreign celebrity’s name as a trademark is an occurrence frequently seen in China. From Leonardo da Vinci and Air Jordan in the past to the rising NBA star Jeremy Lin, it has become a shortcut for companies to quickly occupy the market by using the foreign celebrities’ names as their trademarks.

The name right refers to the right of a citizen to decide, use and alternate the name by himself and to require others to respect his name. Article 31 of the PRC Trademark Law (the "Trademark Law") provides that protection on prior rights has covered protection on the name right. In addition, Article 10 of the Trademark Law provides that trademark registration should not be detrimental to social morals or customs, or have other harmful influences. These provisions also reflect the legislative intent to protect name rights. Specifically, the Trademark Examination Criteria provides that, without authorization, if registering another’s name as a trademark has caused or may cause damage to the name right of other, the mark shall be disapproved or cancelled from registration. The following conditions shall be met when applying under the above rule: a) the disputed mark is the same as the name of an individual; b) The registration of the disputed mark has caused or may cause damage to the name right of that individual. The names include legal names, pen names, and nick names. If using a name to register a mark may be detrimental to social morals or customs or cause other harmful influences, it shall be subject to the provisions under Article 10.Continue Reading Protecting Name Rights of Foreign Celebrities under Trademark Law in China



姓名权是公民依法享有的决定、使用、变更自己的姓名并要求他人尊重自己姓名的一种人格权利。《商标法》第31条有关保护在先权利的规定就包含了对姓名权的保护,此外《商标法》第10条第一款第(八)项有关申请注册商标不得有害于社会主义道德风尚或者有其他不良影响的规定也一定程度上体现了对名人姓名权的保护。具体来说,根据《商标审理标准》的规定:未经许可,将他人的姓名申请注册商标,给他人姓名权造成或者可能造成损害的,系争商标应当不予核准注册或者予以撤销。该条适用要件:(1)系争商标与他人姓名相同;(2)系争商标的注册给他人姓名权造成或者可能造成损害。他人的姓名包括本名、笔名、艺名、别名等。认定系争商标是否损害他人姓名权,应当考虑该姓名权人在社会公众当中的知晓程度。使用姓名申请注册商标,妨害公序良俗或者有其他不良影响的,依据《商标法》第十条第一款第(八)项的规定进行审查。Continue Reading 商标法对国外名人姓名权的保护