Newsletter
UNAUTHORIZED USE OF ANOTHER'S TRADEMARK AS AN ENGLISH CORPORATE NAME IS NOT ALLOWED
Articles 62(1) and 62(2) of the Trademark Act provide that any of the following acts without prior consent from the trademark owner may be deemed infringement of the trademark right: (i) knowingly using a trademark identical or similar to another's well-known registered trademark or using the word(s) contained in another's well-known registered trademark as one's own company name, trade name, domain name or any other sign identifying the entity or source of one's business so as to dilute the distinctiveness or reputation of that famous trademark; or (ii) knowingly using the word(s) contained in another's registered trademark as one's own company name, trade name, domain name or any other sign identifying the entity or source of one's business, thus confusing the relevant consumers of goods or services. Nevertheless, there are controversies about whether the term "company name" or "trade name" covers a company's English name or an English trade name.
The Interpretation of Provisions of the Trademark Act amended by the Intellectual Property Office ("IPO") on 31 May 2005 provides that the term "company name" and the term "trade name" in Articles 62(1) and 62(2) of the Trademark Act refer to the "company name" and the "trade name" specified under the Company Act and the Business Registration Act. Neither the Company Act nor the Business Registration Act has provisions concerning an English name or trade name, and such English name is not required to be included in the articles of incorporation. Even if the articles of incorporation include such English name, this will not have the effect of registration. Therefore, on the basis of the IPO's view, it is doubtful whether or not the use of another person's trademark as an English company name or trade name violates Articles 62(1) and 62(2) of the Trademark Act.
In its Civil Judgment dated 13 November 2008, the Intellectual Property Court indicates that Articles 62(1) and 62(2) of the Trademark Act do not explicitly state that the term "company name" or "trade name" applies only to a Chinese name or trade name, or that the interpretation of a company name or trade name is only subject to the Company Act or the Business Registration Act. Therefore, the application of the relevant provisions should include prohibition of the use of another's trademark as an English company name or trade name. Moreover, the Trademark Act and the Business Registration Act are part of, rather than the only two, laws and regulations governing company names. According to the provisions of the Trade Act, where a company operates import/export business, it is required to register its English name with the Bureau of Foreign Trade.
In the same judgment, the Court further points out that the IPO's interpretation is not binding upon the court; and the IPO's interpretation of the term "company name" or "trade name" in Articles 62(1) and 62(2) of the Trademark Act should not serve as the basis for the court's application of law to the case concerned.