Conflicts over business names and trademark rights in China

It is not uncommon that trademark infringement and unfair competition lawsuits involve brand imitation, a phenomenon where the infringer registers another person’s registered trademark with a certain level of popularity as its own business name, and uses the business name in a manner intended to mislead or confuse consumers.

Generally speaking, a later business name infringes upon a prior trademark under any of the following circumstances: (1) the words highlighted in the business name infringe upon another person’s proprietary rights to a registered trademark; or (2) use of the business name, despite being proper, constitutes an unfair competition activity vis-à-vis the prior trademark holder. In this article, the author discusses judicial practices relating to the second circumstance by reviewing a trademark infringement
case in which Sanyou was involved as
the claimant.

Beijing Sanyou Intellectual Property Agency, the claimant, was the first privately owned patent agency authorized by the State Intellectual Property Office of China (SIPO). Since 1997, the claimant has registered a series of trademarks, including “三友” and “Sanyou” in connection with categories 42 and 45 of intellectual property related services.

Shi Yakai is an attorney-at-law at Sanyou Intellectual Property Agency