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• Re.: how to protect unregistered marks in China

• 
  Sandy Wang    Group moderator

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  Re.: how to protect unregistered marks in China

  It usually take a principle of first filing in China Trademark Office. Thus unregistered marks are not protected by the Trademark Law, excepts the following:
  
  a> An unregistered trademark that has been used and enjoys a certain reputation can bar registration of an identical mark; and
  
  b> An unregistered trademark that is recognized as a well-known mark can bar registration or use of a mark that is identical or confusingly similar to that mark, including reproduction, imitation or translation of the mark, in respect of the same or similar goods and/ or services.
  
  • 29 Sep 2007, 03:37 am
  Sandy Wang wrote: > It usually take a principle of first filing in China Trademark > Office. Thus unregistered marks are not protected by the Trademark > Law, excepts the following: > > a> An unregistered trademark that has been used and enjoys a certain > reputation can bar registration of an identical mark; and > > b> An unregistered trademark that is recognized as a well-known mark > can bar registration or use of a mark that is identical or > confusingly similar to that mark, including reproduction, imitation > or translation of the mark, in respect of the same or similar goods > and/ or services.
• 
  Dr. Oliver S. Hartmann    Premium Member   Group moderator

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  Re: Re.: how to protect unregistered marks in China

  Hello,
  
  Thank you for your interesting information!
  
  I would have some further questions:
  
  a> An unregistered trademark that has been used and enjoys a certain reputation can bar registration of an identical mark; and >
  So, does this section covers identical marks with regard to identical, similar and dissimilar goods/services"? Would it be sufficient that the mark has been USED in a foreign country or is it necessary to have "USE" in China?
  
  b> An unregistered trademark that is recognized as a well-known mark can bar registration or use of a mark that is identical or confusingly similar to that mark, including reproduction, imitation or translation of the mark, in respect of the same or similar goods and/ or services.
  Does that mean a well-known mark, which is not registered, can not be protected with regard to dissimilar goods/services?
  
  Thank you
  
  Best regards from Germany to China
  
  Oliver S. Hartmann
  
  • 29 Sep 2007, 5:16 pm
  Dr. Oliver S. Hartmann wrote: > Hello, > > Thank you for your interesting information! > > I would have some further questions: > > > a> An unregistered trademark that has been used and enjoys a certain > > reputation can bar registration of an identical mark; and > > > So, does this section covers identical marks with regard to > identical, similar and dissimilar goods/services"? Would it be > sufficient that the mark has been USED in a foreign country or is it > necessary to have "USE" in China? > > > b> An unregistered trademark that is recognized as a well-known mark > > can bar registration or use of a mark that is identical or > > confusingly similar to that mark, including reproduction, imitation > > or translation of the mark, in respect of the same or similar goods > > and/ or services. > > Does that mean a well-known mark, which is not registered, can not be > protected with regard to dissimilar goods/services? > > Thank you > > Best regards from Germany to China > > Oliver S. Hartmann
• 
  Sandy Wang    Group moderator

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  Re^2: Re.: how to protect unregistered marks in China

  Hi Oliver,
  
  Thank you for your good questions.
  
  1) Right, the mentioned unregistered trademark can bar registration of an identical mark with regard to identical, similar or dissimilar goods/services.
  
  Although use is only one of the factors to be considered in recognizing a trademark as a well-known mark, without real commercial use in China it is extremely difficult to recognize an unregistered trademark as a well-known mark. Thus It is necessary for the mark to be used in China and known by the relevant Chinese customers.
  
  2) In respect of the dissimilar goods/ services, a well-known mark should be certainly protected .
  
  Please see Article 13 of Trademark Law of China describes as follows for your reference:
  
  A trademark shall not be registered and its use shall be prohibited where the trademark constitutes a reproduction, an imitation, or a translation, of a well-known trademark of another person not registered in China and is likely to create confusion, if the trademark is the subject of an application for registration in respect of goods which are identical or similar to the goods to which the well-known trademark applies.
  
  A trademark shall not be registered and its use shall be prohibited where the trademark constitutes a reproduction, an imitation, or a translation, of a well-known trademark of another person already registered in China and is likely to mislead the public and damage the interests of the owner of the registered well-known trademark, if the trademark is the subject of an application for registration in respect of goods which are not identical or similar to the goods to which the well-known trademark applies.
  
  • 11 Oct 2007, 10:18 am
  Sandy Wang wrote: > Hi Oliver, > > Thank you for your good questions. > > 1) Right, the mentioned unregistered trademark can bar registration > of an identical mark with regard to identical, similar or dissimilar > goods/services. > > Although use is only one of the factors to be considered in > recognizing a trademark as a well-known mark, without real commercial > use in China it is extremely difficult to recognize an unregistered > trademark as a well-known mark. Thus It is necessary for the mark to > be used in China and known by the relevant Chinese customers. > > 2) In respect of the dissimilar goods/ services, a well-known mark > should be certainly protected . > > Please see Article 13 of Trademark Law of China describes as follows > for your reference: > > A trademark shall not be registered and its use shall be prohibited > where the trademark constitutes a reproduction, an imitation, or a > translation, of a well-known trademark of another person not > registered in China and is likely to create confusion, if the > trademark is the subject of an application for registration in > respect of goods which are identical or similar to the goods to which > the well-known trademark applies. > > A trademark shall not be registered and its use shall be prohibited > where the trademark constitutes a reproduction, an imitation, or a > translation, of a well-known trademark of another person already > registered in China and is likely to mislead the public and damage > the interests of the owner of the registered well-known trademark, if > the trademark is the subject of an application for registration in > respect of goods which are not identical or similar to the goods to > which the well-known trademark applies.