China belongs to the wide and wise group of countries that adopt the so-called “first to file” system. According to Article 4 of the Trademark Law, “any natural person, legal person, or other organisation that needs to acquire the exclusive right to the use of a trademark for the goods he produces, manufactures, processes, selects or markets shall file an application for registration of the trademark of the goods with the [China] Trademark Office”. It is not by using a trademark that you obtain exclusivity, but through filing and registering it.
The clarity and simplicity of the “first to file” rule has been somehow obscured by a few inglorious cases (iPad and Castle primarily), which has shown some weakness with a too-strict application of this principle. The “first to file” principle stands, despite some exceptions, and exclusions should be clarified.
China’s Trademark Law
In accordance with the World Trade Organisation, China agreed to integrate into its legal system Article 6bis of Paris Convention for the Protection of Industrial Property, under which any country shall not allow for the registration or use of a trademark constituting an imitation, a reproduction or translation of an unregistered mark well known in a certain country, providing such trademark can be utilised to create confusion on the market of that specific country. So if a well-known trademark is filed by someone who is not the generator of such a reputation, cancellation and prohibition of use are possible.
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Fabio Giacopello is a partner at the Shanghai office of HFG
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