Chinese Trade Mark Law Updates

Unlike AU, China is a first-to-file country.  This means that a trade mark registration will generally trump any prior use of a trade mark.  Hence misappropriation of a trade mark in China is generally very difficult to defend. In China, it is advisable to file a transliteration of an English trade mark adopting Chinese characters sounding similar to the English trade mark.

In a well publicised case, Qiaodan Sports Co adopted the Chinese-language trade mark ‘乔丹’. The characters are pronounced 'chee-ow dahn' or 'qiaodan', which is phonetically similar to 'Jordan'. Michael Jordan has sued the company for unauthorized use of his name. Qiaodan Sports lawyers have defended to company's use of the mark on the basis that the real intention for picking the name, Qiodan was to evoke the actual meaning of  “grass and trees of the south”.  The similarities with respect to marks are however clearly apparent from the Michale Jordan website.

Some further protection for prior users in China is likely to be provided by amendments to the China's trade mark system commencing on 1 May 2014. The amendments should provide for some relief for misappropriation where a mark is misappropriated in bad faith. The amendments will also allow for multi-class registration. When a trade mark is assigned, all similar trade marks in respect of similar goods must also be assigned. When an application is opposed based on a pre-existing registration only the right holder of the pre-existing registration may commence the opposition. 

We will provide further information once, the associated regulations on the Chinese trade mark system have been released.