Beijing High People’s Court approves pre-emptive application

The Beijing High People’s Court recently overruled earlier decisions of the Trademark Review and Adjudication Board and the Beijing IP Court to approve the registration of a trademark filed in an unfair manner by an applicant which sought to pre-emptively register an unregistered trademark belonging to a competitor.  

The application was filed contrary to Article 32 of the Trademark Law which provides, among other things, that an applicant may not pre-emptively register in an unfair manner a mark that is already in use by another party which enjoys substantial influence.

The court's reasoning was as follows:

• the competitior's business licence had already been revoked and the competitor had not used the unregistered mark for more than 10 years before the date of the decision; and
• the trademark sought to be registered had been used by the applicant for more than 10 years, during which a degree of influence had accrued. 

The court took the view that the existing market situation should be respected as otherwise the protection offered to an unregistered trademark would be greater than that offered to a registered trademark.

However, the court cautioned that a trademark filed contrary to Article 32 of the Trademark Law should be allowed or maintained only if the following conditions are met:

• the unregistered prior trademark has not been used for more than three years before the date of the decision; and
• the later applied-for trademark has been used for a long time and already enjoys a certain degree of influence.