Case shows traps involved in protecting unregistered marks

If you wish to cite a prior but unregistered trademark to oppose or invalidate a junior trademark in China, you must resort to articles 13.1 and 31 of the 2001 Trademark Law (renumbered as articles 13.2 and 32 by the latest version of the law, but since the 2001 Trademark Law applies to substantial matters of the case this article will explore, all the citations are from the 2001 Trademark Law). Under article 31, it is not necessary to recognize the well-known status of the unregistered trademark, but under article 13.1, such recognition is necessary.

In practice, the China Trademark Office (CTMO), the Trademark Review and Adjudication Board (TRAB) and the courts tend to rely on article 31 to solve the problem, for convenience and for the lower threshold to invoke protection. In a recent trademark administrative case, Beijing High Court applied both articles to grant full protection over an unregistered trademark.

Guangzhou KuGou Networks is a leading supplier of digital music interactive services in China. KuGou Networks has been offering free music-streaming services to the public since 2004. In July 2009, Shantou Lifeng Electric Appliances applied for the trademarks “酷狗” and “KuGou” (KuGou in Chinese characters & pinyin) for “arrangement and organization of concerts, training; providing karaoke services; entertainment, etc.” in Class 41, which was approved by the CTMO in December 2011. In November 2014, KuGou Networks filed an invalidation application with the TRAB.

Ming Xingnan is a senior associate and Lu Xue is an associate at Wan Hui Da